WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CELLEX-C International Inc. v. Jaye Pharmacy and Absolute Cellex C

Case No. D2003-0423

 

1. The Parties

The Complainant is CELLEX-C International Inc., of Toronto, Ontario, Canada, represented by Lang Michener of Canada ("the Complainant").

The Respondents are Jaye Pharmacy ("the first Respondent") and Absolute Cellex C ("the second Respondent") both of Sherman Oaks, California, United States of America (together "the Respondents") represented by Rozsa & Chen LLP of United States  of America.

 

2. The Domain Name and Registrar

The disputed domain name <cellexc.com> is registered with Dotster Inc ("the first domain name") and the disputed domain name <absolutecellexc.com> is registered with Network Solutions, Inc. ("the second domain name"). The first domain name and the second domain name are together referred to as "the domain names."

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 3, 2003. On June 5, 2003, the Center transmitted by email to Network Solutions, Inc. and Dotster Inc. a request for registrar verification in connection with the domain names. On June 10, 2003, Dotster Inc. transmitted by email to the Center its verification response confirming in respect of the first domain name that the first Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On June 13, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming in respect of the second domain name that the second Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 Respondents of the Complaint, and the proceedings commenced on June 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2003. The Respondent submitted a Response on July 2, 2003.

The Center appointed Tony Willoughby as the sole panelist in this matter on July 10, 2003. 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 16, 2003, the Panel issued Procedural Order No. 1 in the terms of the copy annexed hereto and invited replies from the parties by July 20, 2003. The Complainant responded on July 20, 2003. The Respondents responded on July 25, 2003. The Panel accepts the Respondentsí Response to the Procedural Order notwithstanding that it was out of time.

Finally, it should be noted that in the course of the proceeding the Complainant filed a Reply Brief following the Respondentís Response to the Complaint. From the Complainantís submissions to the Panel, it would appear that the Reply Brief relates to a factual dispute between the parties over who said what to whom following registration of one or other or both of the domain names. The Panel elects not to allow the Reply Brief into the proceeding on the basis that to do so would simply extend the process to no sensible effect. No amount of submissions and counter-submissions on that topic is likely to shed any further light on the dispute. Instead, the Panel proposes to rely upon the correspondence and submissions supplied in response to the Procedural Order.

 

4. Factual Background

The Complainant is a Canadian manufacturer of cosmetics and cosmeceuticals. One of its principal brands of skincare products is CELLEX-C.

The Respondents, which are closely associated (the second Respondent is owned and run by the first Respondent), are Californian retailers of cosmetics and pharmaceuticals. They sell the Complainantís CELLEX-C. The Complainant is a proprietor of a number of trademark registrations for the mark CELLEX-C, the earliest of which, a UK registration, dates back to 1994. There are US and Canadian registrations which date back apparently to 1997. The Complainant operates a website at "www.cellex-c.com."

On July 1, 1999, the Complainant appointed Caleel + Haydon LLC of Denver, Colorado, as exclusive distributor of its skincare products in the United States of America. The first Respondent registered the first domain name on May 19, 2000, and the second Respondent registered the second domain name on November 2, 2000.

On June 15, 2000, the Complainant wrote to the first Respondent seeking transfer of the first domain name. On October 11, 2000, the Complainant wrote again referring to conversations between the Complainant and the first Respondent and again seeking transfer of the first domain name. There was no (or at any rate no satisfactory) response so the Complainant sent a further chaser on November 30, 2000. As will be seen below, the first Respondent recollects providing a detailed written response to the Complainantís letters of June 15, 2000, and October 11, 2000, but cannot locate a copy of the letter.

Further telephone communications took place between the Complainant and the first Respondent (they are referred to in the letter from the Complainant to the first Respondent dated February 21, 2001) although the Panel has no information as to what was said in those conversations. Suffice it to say that the said letter indicates that the Complainant required transfer of the first domain name to be effected as soon as possible.

On February 28, 2001, the first Respondent wrote to the Complainant "to respond and address [the Complainantís] concerns regarding [the first Respondentís] website Ďcellexc.comí." The letter goes on to catalogue the benefits to the CELLEX-C brand of that website. The letter concludes with a post script reading "I have not yet received your previously-mentioned contractual agreement which would allow us to continue use of the Ďcellexc.comí website."

On April 24, 2001, the Complainant wrote to the first Respondent again seeking transfer of the first domain name. On the same day, lawyers representing the Complainant wrote to the first Respondent in respect of both domain names seeking immediate transfer of the domain names to the Complainant.

There then appears to have been some without prejudice communications between the parties, but they have not been produced to the Panel.

At all events, any attempt to settle the dispute failed and on December 21, 2001, the Complainantís exclusive distributor in the United States, Caleel + Haydon LLC, instituted a complaint against the first Respondent in respect of the first domain name (WIPO Case No. D2001-1475). That complaint failed on the basis that the distributor (the complainant in that proceeding) did not have any relevant rights of the kind required of a complainant by paragraph 4(a)(i) of the Policy.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the domain names are, in the case of the first domain name, nearly identical to the Complainantís trademark CELLEX-C and, in the case of the second domain name, confusingly similar to the Complainantís said trademark. The Complainant observes that the presence of the word "absolute" in the second domain name does nothing to alleviate the risk of confusion.

The Complainant contends in respect of both the domain names that Internet users will assume them to be domain names of the producers of the CELLEX-C range of products or of authorized dealers/distributors of those products.

The Complainant accepts that the Respondents are retailers of the Complainantís CELLEX-C products, but denies that that gives to the Respondents any rights to use the Complainantís trademark as or as part of domain names or indeed in the case of the second Respondent, as part of a business name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names or either of them. The Complainant has given neither Respondent any licence to use its trademark for that or any other purpose.

The Complainant contends that the second Respondent is a creature of the first Respondent and was established by the first Respondent with knowledge of the Complainantís objections to unauthorized use of its trademark as part of domain names. The Complainant contends that while it is reasonable for retailers of goods to make certain uses of the trademarks associated with the goods which they are selling, the Respondentsí use of the Complainantís trademark goes well beyond what is reasonable.

The Complainant points to the following matters:

(i) there are similarities in design between the Complainantís website and the first Respondentís website at "www.cellexc.com," such as to lead consumers to believe that they are at an official website of the Complainant;

(ii) on the "www.cellexc.com" website there is no disclaimer indicating that the site is being operated by anyone other than the Complainant or somebody authorized by the Complainant;

(iii) the first Respondentís name is conspicuous by its absence from any prominent position on the "www.cellexc.com" website. This contributes to the impression that the site is an official site of or associated with the Complainant;

(iv) in the result, not only is the first Respondent falsely indicating that it is an official distributor/retailer of the Complainantís goods, it is also unfairly preferring itself to other retailers and distributors (including official distributors) of the Complainantís products.

As to the website connected to the second domain name (i.e. "www.absolutecellexc.com") the Complainant points out that it is not used exclusively to promote sales of the Complainantís CELLEX-C products, but also to promote the products of the Complainantís competitors.

The Complainant also objects to other aspects of the second Respondentís use of that site. It contains no acknowledgement of the Complainantís ownership of the CELLEX-C trademark. It contains no disclaimer. It contains nothing to counter the impression given that it is an official website of the Complainant. It gives the impression that either the second Respondent is the manufacturer of all the products on the site (including the Complainantís products) or that the Complainant is the manufacturer of all those products.

The Complainant contends that the Respondents registered the domain names and are using the domain names in bad faith. The Complainant points out that the Respondents operate other websites (e.g. "www.800compound.com") through which they sell their products. The Complainant contends that the Respondents registered the domain names with a view to attracting consumers to their websites under the false impression that those sites are official websites of the Complainant or its authorized dealers/distributors.

The Complainant seeks transfer of the domain names to the Complainant.

B. Respondents

The Respondents admit that the second Respondent is affiliated with and owned by the first Respondent.

The Respondents admit that the references to CELLEX-C in the domain names are references to the Complainantís trademark. The first Respondent claims to have had a business relationship with the Complainant going back at least ten years. It claims to have been the first retailer of CELLEX-C products in the United States of America.

The Respondents do not deny the existence of the Complainantís trademark rights nor do they appear to deny that the domain names are identical or confusingly similar to the Complainantís trademark.

The Respondents claim that they created their websites at "www.cellexc.com" and "www.absolutecellexc.com" to enhance sales of CELLEX-C products. They say that the second domain name was selected "in order to give it a starting letter A so that individuals would more readily find it to further enhance the sales of CELLEX-C products."

The Respondents claim "priority of use of the CELLEX-C trademark in the United States." The Respondents claim "Jayeís sales of CELLEX-C in the United States even pre-date any sales of Complainant in the United States. Therefore Respondentsí priority of use of the CELLEX-C trademark in the United States pre-dates both Complainant and Caleel."

Additionally, the Complainant makes a priority claim in respect of the Complainantís trademark rights. Paragraph 6 of the Response reads as follows:

"Attached to the Kohanbash Declaration as Exhibit 1 is a copy of the trademark registration application for ANTI-AGING INTERNATIONAL INC., a corporation of Canada, who applied to register the trademark "CELLEX-C" on May 27, 1994, as an intent-to-use application (which means that they did not have use of that mark at that time in the United States). The application was Serial Number 74/530,240 and the application subsequently issued as Registration No. 2,092,395 on September 2, 1997. Complainant subsequently obtained an assignment of this registration as set forth in Exhibit I to the Complainantís Complaint, but its priority is based upon the priority as set forth in the application by ANTI-AGING INTERNATIONAL INC. The absolute priority date of ANTI-AGING INTERNATIONAL INC. is May 27, 1994, which is its filing date as an intent-to-use application and the registration shows its actual date of first use being June 1, 1994. Since Jayeís first use of "CELLEX-C" in the United States dates back to 1993, Respondent has a very substantial priority over the use over ANTI-AGING INTERNATIONAL INC., the predecessor to the registration owned by Complainant."

The Respondents state that they registered the domain names solely for the purpose of promoting sales of the Complainantís CELLEX-C products. They further state that in discussions that they had with the Complainant, the Complainant indicated that it had no problem with the first Respondent registering the first domain name.

The Respondents further claim (Affidavit of Kohanbash submitted in response to the Procedural Order) that following the Complainantís first two letters of demand (June 15, 2000, and October 11, 2000) the first Respondent "wrote a responsive letter which the Respondents cannot now locate." Paragraph 4 of that Affidavit reads as follows:

"A few says after I sent the letter in October 2000, I called Simon Rosenfeld [Respondentsí in-house lawyer] and had a conversation which followed up my responsive letter. In the conversation I explained to Mr. Rosenfeld that we were the first company to promote CELLEXC.COM in the United States and that the website for CELLEXC.COM would only be used to sell Cellex-C® products. Mr. Rosenfeld told me that his concern was that we would be selling other products under the CELLEXC.COM domain name and as long as we were selling only Cellex-C® products, we could have the domain name. Mr. Rosenfeld told me that his company did not care about owning the domain name but was only concerned that someone would be using the domain name to sell non-Cellex C® products."

The Respondents exhibited to the Response one of the letters in the line of correspondence between the parties, namely the letter from the Respondents to the Complainant dated February 28, 2001. The Respondents rely heavily upon that letter as support for the contention that the Complainant was content for the first Respondent to continue use of the first domain name. The letter reads as follows:

"Dear Mr. Rosenfeld

"I would like to respond and address your concerns raised regarding our website ĎCellexC.com.í This website was created after approximately 4 months of significant planning, design, and financial investment. By no means, does this website represent an attempt to thwart or interfere with the efforts of the company Cellex-C to generate business through their own website. As one of your largest retailers in the United States, I considered having a website dedicated to my best selling line of skin care product (i.e. Cellex-C) as an essential and basic step in the marketing and retailing of the product to my customers.

"Importantly, most of the web traffic to my website is generated from other websites and addresses not directly linked to Cellex-C. These include beauty, cosmetics, and anti-aging related websites referred by major search engines such as Yahoo, and Go.com. In other words, the majority of traffic to our website is NOT directly from individuals typing the words "CellexC" as their search word, but rather by using related keywords such as "anti-aging," "wrinkles," etc Ö

"However, I consider an e-commerce website as only part of a truly exceptional marketing plan that would elevate Cellex-C to the status it truly deserves. I would like to reassure you that my standing as one of the largest (if not the largest) retailers of Cellex-C products in the United States was not achieved by mere good fortunes.

"Furthermore, in response to your recent request for specific details related to distribution of Cellex-C products, and in order to further enlighten you about the efforts that I have already undertaken if that opportunity is ever granted, I have prepared the following outline for your perusal.

A) We suggest providing all existing and new customers with a customized display rack, free of charge, marked with the Cellex-C®. This display rack (a representative sample of which has been sent to you) can be lit; Undoubtedly it will significantly enhance the presentation and distinctiveness of cellex-C® products apart from all other products on the counter or on the shelf of stores.

B) A renovated warehouse, capable of handling large quantities of supplies, has already been procured and is ready for use.

C) A State-of-the-art computer system (hardware and software) has already been purchased and programmed to receive, send, and track all shipping orders.

D) All orders will be delivered, free of charge, next day, to our customers. Forma arrangements have already been made with DHL for their services. As you are already aware, customers are currently charged $40 to $80 for delivery Ė usually not even next day!

E) Adequate supply of samples will be made available for all our customers.

F) All returns will be authorized ASAP, no questions asked.

G) A generous incentive plan will be available to further encourage sales by our customer service representatives.

H) Every effort will be made to discuss the merits of Cellex-C® products in print, on radio, cable television, as well as in professional health care seminars.

I) I also propose submitting articles (either as editorials or as paid advertisements) in local newspapers (health and wellness section), health magazines (in particular, publications such as Dermatology Times, and Skin and Allergy News).

J) As you are aware, our efforts have already led to the publication of information about Cellex-C as well its "hallmark" before and after pictures in a popular beauty-oriented magazine.

K) We will attend national healthcare/cosmetic expositions, usually held in large city conventions. Specifically, I will arrange for a booth dedicated specifically to Cellex-C.

L) Similarly, we will attend meetings designated specifically for dermatologists (in particular the annual AAD meeting) in order to truly establish Cellex-C as a viable alternative (if not a complementary option) to other skin care products. As you are surely aware, MD Formulation®, MD Forte®, and Neostrata® heavily market their products to dermatologists, and have a significant market share of the anti-aging topical products.

M) We also recommend training of drug representatives who will call on and visit physicians, pharmacists, estheticians, as well as owners of spas and beauty/cosmetics stores.

"I hope the above outline of proposals is helpful for you. Please call me at your own convenience with any questions or comments.

Sincerely,

David Kohan, Rph

P.S. I have not yet received your previously-mentioned contractual agreement which would allow us to continue use of the "Cellexc.com" website."

The Response (paragraph 12) goes onto state:

"Based upon the encouragement from Mr. Rosenfeld and in reliance on his verbal statements to Mehran David Kohanbash that Complainant had no problem with Jaye owning the domain name CELLEXC.COM, Jaye has invested over $140,000.00 in developing the website for CELLEXC.COM and ABSOLUTECELLEXC.COM making it a first rate, first class interactive website which is now located on many search engines and through which the Respondents have developed a substantial clientele. Mehran David Kohanbash and Joseph Kohan have invested an enormous amount of time in addition to direct financial investment by Jaye in the development of the CELLEXC.COM website and the ABSOLUTECELLEXC.COM website based upon the verbal approvals received from Simon Rosenfeld of Complainant. Respondents consider it grossly unfair to have this WIPO action filed against their domain name registrations by Complainant who was well aware of the use of the domain names and registrations long before this Complaint was filed and long before Respondent invested over $140,000.00 in developing the domain names."

Taking all the above into account the Respondents claim that they have demonstrated that their use of the domain names are in connection with a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy and they therefore have rights or legitimate interests in respect of the domain names for the purposes of paragraph 4(a)(ii) of the Policy. In paragraph 21 of the Response they say "Respondents have been selling Complainantís products in the United States since 1993 and have been selling Complainantís products through their websites at the subject domain name since they were registered in May 2000, which established Respondentsí rights and legitimate interests in the subject domain names." They say that the Respondents do not have to be authorized dealers of the Complainantís products or be authorized to use the name used by the Complainant to establish their rights and legitimate interests in the domain names. They further say that the fact that the Respondents also sell other third partiesí products through their websites at the domain names does not negate the rights and legitimacy of the Respondentsí bona fide use of the domain names. They further contend that "the fact that Respondents did not explicitly disclaim any relation or authorization from Complainant does not negate the rights and legitimacy of Respondentsí bona fide use of the subject domain names."

The section of the Response dealing with the Respondentsí rights and legitimate interests ends with two paragraphs reading as follows:

"Therefore, based upon the extensive use by Respondents going back to 1993 of the mark Cellex-C® for sales of the Complainantís products and its legitimate rights to use and register the domain name to help promote and sell the Cellex-C® products and the substantial investment that the Respondents have made in the promotion and development of the domain names to make them profitable and beneficial domain names which sell many Cellex-C® products, Respondents clearly have legitimate rights and interests with respect to the domain names CELLEXC.COM and ABSOLUTECELLEXC.COM.

"As amply set forth above, and as supported by the accompanying Kohanbash Declaration, before Respondents received any notice of the dispute, there is very substantial evidence of the Respondentsí use of and clearly demonstrable preparations to use, the subject domain names in connection with a bona fide offering of the goods or services. There is no question that the Respondents have been using the domain names CELLEXC.COM and ABSOLUTECELLEXC.COM for a bona fide use and the sale of the Complainantís own Cellex-C® products for many years before Complainant ever brought this Complaint and Complainant was well aware of the use by the Respondents of the domain names CELLEXC.COM and ABSOLUTECELLEXC.COM to sell the Cellex-C® products. All this evidence supports Respondentsí contention that they have rights and legitimate interests to use the subject domain names well before any notice of this dispute."

The Respondents deny that they registered the domain names in bad faith and they deny that they are using the domain names in bad faith. They deny that any of the examples set out in paragraph 4(b) of the Policy are applicable.

They rely heavily on their bona fide use of the domain names to enhance sales of the Complainantís products and summarise their position in this section of the Response as follows:

"In summary, Respondents had every right to register the domain names since they were legitimately engaged in the sale of products from a date which predates any priority that the Complainant can claim in either Canada or the United States. Further, Respondents had every right to expect that they would have the right to continue to use the domain names based upon the statements and actions of the Complainantís own general counsel Simon Rosenfeld who gave David Kohanbash encouragement and permission to continue to use and register the domain names because Mr. Rosenfeld was highly dissatisfied with the efforts of Complainantís key distributor Caleel. Therefore, based upon the actions and statements of Complainantís own general counsel, Respondents had every right to expect that they would have the right to use and register the domain names CELLEXC.COM and ABSOLUTECELLEXC.COM and there is absolutely no bad faith whatsoever in Respondentsí registering and using of the domain names CELLEXC.COM and ABSOLUTECELLEXC.COM."

Finally, the Respondents contend that the Complaint should be dismissed on the grounds of laches, waiver and estoppel and that the Complainantís conduct in filing the Complaint should be branded by the Panel as reverse domain name hijacking.

In support of the first of those claims the Respondents point to the Complainantís knowledge of the domain names for a period of years prior to the filing of the Complaint, they point to the fact that the Complainant has been sitting back for an extended period while allowing the Respondents to invest over $140,000 in developing the Respondentsí websites connected to the domain names.

The Respondents complain that the Complainant is seeking to steal the domain names from the Respondent without any compensation.

In support of the reverse domain name hijacking claim, the Respondents conclude as follows:

"In this proceeding, there is ample evidence that supports the finding of reverse domain name hijacking pursuant to Rules 15(e). The Complainant was well aware of the use and registration by the Respondents for over two years for legitimate sales of Complainantís products. The Complainant also has no credible evidence of any bad faith on the part of the Respondents in registering and using the subject domain names yet Complainant is seeking to hijack the domain names after the Respondents have invested a substantial sum of money to build up great value to the domain names. This is clearly a case of reverse hijacking on the part of the Complainant and it is respectfully requested that the Panel so find."

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."

Reverse domain name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."

A. Identical or Confusingly Similar

There is no dispute that the domain names are identical to or confusingly similar with the Complainantís CELLEX-C trademark and the Panel so finds.

B. Rights or Legitimate Interests

Does the fact that the Respondents are and have long been retailers of the Complainantís products give them rights or legitimate interests in respect of domain names featuring a version of the Complainantís trademarks? Both parties have cited a variety of previous decisions under the Policy dealing with this issue. The Panel has not found those citations of any particular assistance. Not surprisingly, some go one way and some the other. Each case has to turn on its own facts.

In this case, the Respondents have not disputed that the domain names are confusingly similar to the Complainantís trademark; nor could they have done so. The first domain name, apart from the generic domain suffix, is identical to the Complainantís trademark, save for the missing hyphen, whereas the second domain name is the Complainantís trademark without they hyphen and with a purely generic prefix.

Nonetheless, the Respondents say that no confusion results because the sites are what they purport to be, namely sites selling CELLEX-C products. On the facts of this particular case (the Panel declines to express any views of general application beyond the facts of this case) the Panel is of the view that confusion is likely and for one or more of the following reasons:

(i) a substantial proportion of Internet users are likely to believe that the websites connected to the domain names are official websites of the Complainant or distributors/dealers authorized by the Complainant. This impression is likely to be gained simply from a sight of the web addresses, the principal element of each being the Complainantís trademark.

(ii) There is nothing on either of those websites which is of sufficient prominence to dispel that impression.

(iii) In the case of the website connected to the second domain name, products other than CELLEX-C are sold through the site. There is a significant risk therefore that internet users will believe the various products featured on the site to be associated with one another e.g. they are all made by the same organization.

In the view of the Panel, while the Respondents claim that their primary purpose was to promote sales of CELLEX-C products, the risks of confusion identified above must have been obvious to the Respondents when registering the domain names.

The Panel finds that the registration of domain names in such circumstances cannot give rise to rights or legitimate interest in respect of the domain names. Accordingly, subject to one possible qualification, the Panelís provisional view is that the Respondents have no rights or legitimate interests in respect of the domain names.

The Panel rejects the suggestion that paragraph 4(c)(i) of the Policy is applicable here. To conduct a business by reference to a domain name which must necessarily lead to confusion of Internet users cannot be characterized as a bona fide offering of goods/services.

In this case the Respondent cannot even pray in aid a disclaimer or some similar feature of the website which dispels the likelihood of confusion. The adoption of the business name "Absolute Cellex C" by the second Respondent highlights the potential for confusion and the Respondentsí seeming willingness to encourage it.

The Panel suggests above that there could be a qualification to its provisional finding of an absence of Respondentsí rights and legitimate interests in respect of the domain name. The Respondents assert that their adoption of the domain names and their use of the domain names to connect to their websites has been consented to by the Complainant. Mr. Kohanbash, an owner of the Respondents, has said as much (at any rate in relation to the first domain name) in his sworn statement filed in response to the Procedural Order. The Panel concedes that if Mr. Kohanbash is correct, then the Complainant cannot be heard to complain (at any rate in relation to the first domain name). If, as the Respondents assert, the Complainant, knowing of the domain names and the websites to which they are connected, has not only sat back and done nothing, but in addition has expressly permitted the Respondents to use the domain names as they are using them, then it would be unconscionable for the Respondents to be deprived of the domain names.

However, the Panel is not satisfied that Mr. Kohanbash is correct. The correspondence produced by the Complainant in response to the Procedural Order demonstrates that from the outset the Respondents were aware of the Complainantís concerns. The very letter produced by the Respondents in support of their contention that the Respondentsí use of the first domain name had the consent of the Complainants supports the Complainantís position in the matter, namely that there was no consent. The letter, which is quoted in full at pages 6 and 7 above, refers to the Complainantís concerns. Clearly, the Respondents were aware of those concerns. Those concerns were still live at the date that letter was written. The postscript indicates that whatever the Respondents had hoped would be agreed, was not at that stage agreed.

The correspondence which follows in April 2001, reiterates what appears to have been a consistent position adopted by the Complainant. There was then the failed complaint, but even that can have given the Respondents no comfort. That complaint failed, not on the underlying merits of the complaint, but in substance simply because the complainant in that complaint was the wrong complainant.

No reason has been given for the delay in filing this Complaint, but the Panel finds it impossible to believe that the Respondents cannot have anticipated it as a likely sequel to the previous Complaint.

Save for the unsupported assertions of Mr. Kohanbash, there is nothing in the papers before the Panel to support any acquiescence still less approval or consent on the part of the Complainant.

The Panel concludes that the Respondents must have misunderstood what was being said to them over the telephone.

Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the domain names or either of them.

C. Registered and Used in Bad Faith

While the Respondents appear unlikely candidates for the title of "cybersquatter," being, as they are, substantial retailers of cosmetics and pharmaceuticals, they have put themselves into that category by opportunistically having taken the Complainantís trademark without the authority of the Complainant. Furthermore, they have used it to create the domain names and the second Respondentís business name. They have done it for commercial gain, namely to increase their sales of the Complainantís products. In the case of the second domain name, their use of the Complainantís trademark may well enhance the second Respondentís sales of products competing with the Complainantís products. They have used the domain names, as the Panel has found, in a manner calculated to lead Internet users to believe that the Respondentís websites are in some way associated with or authorized by the Complainant.

In so doing, they have registered the domain names and are using the domain names in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

 

7. Decision

In the result, the Complaint succeeds and the Panel directs that in the light of the foregoing findings, namely that the domain names are confusingly similar to a trademark in respect of which the Complainant has rights and that the Respondents have no rights or legitimate interests in respect of the domain names and that the domain names were registered in bad faith and are being used in bad faith, the Panel directs that the domain names and each of them be transferred to the Complainant.

The Complaint having succeeded, necessarily the allegation of reverse domain name hijacking is dismissed.

 


 

Tony Willoughby
Sole Panelist

Dated: July 29, 2003