WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Galderma S.A. v. Eric Kaiser, Chairut Kompeerapun
Case No. D2003-0495
1. The Parties
The Complainant is Galderma S.A. of Fort Worth, Texas, United States of America, represented by Cole Ramey of Crouch & Inabnett, L.L.P of Dallas, Texas, United States of America.
The Respondents are Eric Kaiser of Colorado Springs, Colorado, United States of America, and Chairut Kompeerapun of Pakpreaw, Muang, Thailand.
2. The Domain Names and Registrar
The disputed domain names <buydifferin.com> and <erythromycin-adapalene-differin-gel-cream-acne-medication.com> are registered with Stargate Communications.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2003. On June 24, 2003, the Center transmitted by email to Stargate Communications a request for registrar verification in connection with the domain names at issue. On June 27, 2003, Stargate Communications transmitted by email to the Center its verification response confirming that the Respondent, Eric Kaiser, is listed as the registrant. 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 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2003. The Respondents did not submit any response. Accordingly, the Center notified the Respondents of default on July 25, 2003.
The Center appointed Sandra Franklin as the sole panelist in this matter on August 5, 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.
4. Factual Background
Complainant is the owner of eighty-seven worldwide trademarks and twenty pending registrations for the mark DIFFERIN. DIFFERIN has been in commercial use since 1996, and the mark has become incontestable. Complainant also holds numerous United States and international marks for GALDERMA and Galdermaís corporate logo, under which Complainant manufactures, markets, distributes and promotes the topical acne cream DIFFERIN.
5. Partiesí Contentions
Complainant makes the following assertions:
1. Respondentsí <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names are confusingly similar to Complainantís marks.
2. Respondents do not have any rights or legitimate interests in the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names.
3. Respondents registered and used the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names in bad faith.
The Respondents did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondentsí failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondents have no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has clearly established rights in the mark DIFFERIN by appending evidence of numerous registrations and pending registrations for the mark. Complainant has used DIFFERIN since 1996, and the mark has become incontestable. Respondentsí domain names incorporate Complainantís mark DIFFERIN and merely add other descriptive words to it. One of the added words is ADAPALENE, the active ingredient in DIFFERIN, patented by Complainant. Respondents are not authorized by Complainant to use the mark in any way, yet Respondentsí website repeatedly displays both Complainantís mark DIFFERIN and its corporate name GALDERMA. This creates a likelihood of confusion as well as a danger to Complainant that harmful products are being improperly sold under its marks.
It has been held in innumerable previous cases that the addition of non-distinctive and descriptive words to a trademark creates confusion, and particularly where a competitor uses an established mark to sell similar or identical goods. See, for example, Pfizer, Inc. v. Order Viagra Online, WIPO Case No. D2002-0366.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Respondents did not submit a Response to the Panel in this proceeding. Since Respondents have not provided any circumstances showing that they had rights or legitimate interests in the disputed domain names, the Panel will accept as true all allegations and inferences as set forth by Complainant in the Complaint. See G.D. Searle & Co. v. Martin Marketing, FA 118277, National Arbitration Forum, October 1, 2002, holding that where Complainant has asserted that Respondents have no rights or legitimate interests with respect to the domain name, it is incumbent on Respondents to come forward with concrete evidence rebutting this assertion because this information is "uniquely within the knowledge and control of the respondent"; see America Online, Inc. v. AOL Internatinal, WIPO Case No. D2000-0654, finding no rights or legitimate interests where Respondents fail to respond.
The WHOIS contact information does not indicate that Respondents are commonly known by the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names. The disputed domain names are very similar to Complainantís web site "www.differin.com" and employ Complainantís trademark DIFFERIN. Thus, the Panel finds that Policy paragraph 4(c)(ii) does not apply to Respondents. See Tercent Inc. v. Lee Yi, FA 139720, National Arbitration Forum, February 10, 2003, stating "nothing in Respondentís WHOIS information implies that Respondent is Ďcommonly known byí the disputed domain name" as one factor in determining that Policy paragraph 4(c)(ii) does not apply; see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718, National Arbitration Forum, February 6, 2003; "Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainantís registered and distinctive [MEDLINE] mark, the Panel concludes that Policy paragraph 4(c)(ii) does not apply to Respondent."
Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. In fact, Respondents are purposely capitalizing on the trade value of Complainantís well-established and heavily marketed trademarks to sell competing goods, the antithesis of bona fide use. See Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141, which held that the use of a domain name which incorporates a registered mark in order to sell products in the same class as mark holder inherently and intentionally seeks to exploit user confusion, and therefore cannot constitute bona fide use. The Panel finds that Policy paragraph 4(c)(i) and Policy paragraph (4)(c)(iii) do not apply to Respondents.
For the foregoing reasons, the Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
This Panel finds that Respondents have registered and used the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names primarily for the purpose of disrupting Complainantís business, indeed by directly competing with Complainant by selling or attempting to sell products patented and trademarked by Complainant. In response to a cease and desist request from Complainant, Respondents had previously agreed to stop using domain names incorporating Complainantís mark DIFFERIN. It is evidence of bad faith that one of the Respondents then re-registered the domain name <buydifferin.com> and promptly sold it to a third party, allegedly in Thailand, also a Respondent herein. Such use has routinely been held to demonstrate bad faith. See Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177; Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478.
Respondents also maintain dozens of similar domain names and/or websites that contain the trademarks of others. Such a pattern has also routinely been held as evidence of bad faith. See, for example, Lancôme Parfums et Beauté & Cie v. SL, Blancel Web, WIPO Case No. D2001-0028.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the <buydifferin.com> and <erythromycin-
adalpene-differin-gel-cream-acne-medication.com> domain names be transferred to Complainant.
Dated: August 11, 2003