The Complainant is Heraeus Kulzer GmbH of Hanau, Germany, represented by Kirschstein, Israel, Schiffmiller & Pieroni, United States of America.
The Respondent is Dr. Walt Stoll of Ohio, United States of America, represented by Fitch, Even, Tabin & Flannery, United States of America.
The disputed domain name <venussmile.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2010. On February 1, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On February 2, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on February 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2010. At the Respondent's request, that date was extended to March 8, 2010. The Response was filed with the Center on March 8, 2010.
The Center appointed Alan L. Limbury as the sole panelist in this matter on March 15, 2010. 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.
The Complainant is the registered proprietor of German trademark VENUS, No. 30201404, registered on May 13, 2002 for “chemical products for dental and dental-technical purposes, teeth filling material” and of United Stated federally registered trademarks VENUS, No. 2766361, dated September 23, 2003, for “chemical products, namely, teeth filling materials for dental purposes” and VENUS DIAMOND, No. 3656259, dated July 21, 2009, for similar goods. It has a pending application to register as a trademark in the United States VENUS SMILE in the dental field, application No. 76678464.
The Respondent has practised dentistry in Ohio for more than twenty-five years. He registered the Domain Name on December 3, 2006. Prior to May, 2009, it led to a free GoDaddy parking page containing sponsored links to products and services unrelated to dentistry, namely links related to science in general and to astronomy in particular. On March 9, 2009, in a letter which the Complainant claims was sent to the Respondent giving notice of the Complainant's asserted trademark rights, the Complainant described the Domain Name as “currently unused”. In May, 2009, the GoDaddy parking page began displaying sponsored links to dental products and services which compete with those of the Complainant. Following the filing of the Complaint, the Domain Name has led to a holding page announcing the forthcoming development of a website.
The Complainant says it has built a family of United States marks in the dental field incorporating the term “venus”, both by use in commerce and by application and registration in the United States Patent and Trademark Office (“USPTO”), including VENUS DIAMOND (Registration No. 3656259 and common law); VENUS SMILE (Application No. 76678464 and common law) and VENUS WHITE (common law).
Through its wholly owned United States subsidiary, the Complainant has made sales of dental goods in the United States since 2002 under its VENUS family of trademarks, amounting to over 7 million dollars by late 2006 and nearly 25 million dollars by mid-2009. Since 2002, it has also spent over 5 million dollars on advertising the VENUS family of marks for dental goods.
The Complainant says the Domain Name is identical or confusingly similar to trademarks in which it has rights and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says it had been using and had registered its VENUS mark before the Respondent registered the Domain Name. The Respondent has acquired no rights from the Complainant, by licence or by other means, and has not registered or sought to register “venussmile” as a mark in the United States. While the Respondent advertises his dental practice at “www.greatsmilez.com”, no mention is made there of the mark VENUS or any other mark incorporating the term “venus”. The Respondent has made no legitimate, noncommercial or fair use of the Domain Name. To the contrary, the goods offered at the website to which the Domain Name resolves, starting in 2009, have been dental goods, the same as the Complainant's. The name of the Respondent is clearly not the same as the Domain Name. The Respondent's lack of rights in the term “venussmile” is not surprising since only the Complainant has been able to register a mark incorporating the term VENUS in the USPTO for dental goods.
As to bad faith, the Complainant says the Respondent's bad faith at the time that he registered the Domain Name in December 2006 is clear because he knew of the Complainant's rights in the VENUS mark well before then. He had received some free VENUS dental goods from the Complainant by accepting a free offer made at a dental trade show in 2003.
The Respondent has used the disputed domain name to attract Internet users to his website, where he has marketed dental goods and services of the kind sold by the Complainant under its VENUS mark and its VENUS family of marks, thereby creating confusion as to the Complainant's sponsorship of or affiliation with that website. On March 9, 2009, the head of the Complainant's United States subsidiary wrote to the Respondent, expressly alerting him to the Complainant's ownership of the VENUS and VENUS SMILE marks, and advised that, with regard to the Domain Name:
“Any use of that domain name in the dental field would conflict with our VENUS marks, and could result in a variety of measures, including one that would lead to an involuntary transfer of the domain name.”
Soon afterward the website to which the Domain Name resolves started to advertise dental goods and services.
In anticipation of the argument that the Domain Name was “parked” with the Registrar, it was noted in Hoffmann-La Roche Inc. v. Alan Truskowski, WIPO Case No. D2006-1606:
“[E]ven if the Respondent did not choose the specific advertising links displayed on the domain parking website [...] as the registrant of the Domain Name the Respondent must bear some responsibility for the uses to which it is put.”
The Complainant says this case is even stronger because here the advertising for dental goods and services was obviously instigated by the Respondent himself. It commenced shortly after the Complainant's warning against precisely such advertising.
The Complainant cites Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, as support for the proposition that “recent bad faith exhibited by the Respondent is the only bad faith normally required for involuntary transfer of his domain name”.
The Respondent denies the Complainant's allegations. He says the Complainant did not own trademark rights in the mark VENUS SMILE and did not own a “Venus family of marks” when the Respondent selected and registered the Domain Name. The only issued trademark that the Complainant claims to have owned anywhere in the world as of December 3, 2006, is the mark VENUS for a dental tooth filling material designed for use by dentists and marketed only to dentists and dental professionals.
The Respondent says that more than six months after the Domain Name was registered, the Complainant appears to have adopted the trademark VENUS SMILE for a line of dental products and services for dental professionals that it intends to offer. The Complainant's rights in the VENUS SMILE trademark cannot extend outside the dental field so as to restrict third party use of that mark or other VENUS formative marks in connection with goods and services unrelated to the dental field. More than 150 VENUS formative marks are currently pending before the United States Trademark Office for a variety of goods and services, showing that the Complainant does not have the sole right to use “venus” for every conceivable use. As a result, the Respondent submits that the Domain Name, which he intends to use for a line of anti-aging skincare products, is not confusingly similar to any of the Complainant's VENUS trademarks.
The Respondent says he has rights and a legitimate interest in the Domain Name because he has had a life-long interest in cryogenics, cryobiology, senescence and the preservation of human tissue, and has been using his knowledge and prior research in these fields to research and create anti-aging skin care products. Prior to knowledge of this dispute, the Respondent intended and currently intends to use the Domain Name as the web address from which he may sell an anti-aging skin care line currently under research and development. Because he is a full time dentist, he has only a limited number of spare hours in which to conduct this research and development. Recent economic events over the past few years have affected progress. However, the Respondent has created draft text and artwork for the webpage to announce the development of his anti-aging skin care line, for which he selected the combined term VENUS SMILE to suggest beautiful, seductive, and glowing skin.
The Respondent notes the generally accepted UDRP panels' view that (absent certain limited exceptions not relevant in this case) the registration of a domain name prior to the establishment of relevant trademark rights by the complainant precludes the finding that the registration of the domain name was done in bad faith. PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437. He says that bad faith registration cannot be found in this case because the Complainant has failed to establish that it owned common law or statutory trademark rights in the VENUS SMILE mark as of the December 3, 2006, date on which the Respondent registered the Domain Name.
As to bad faith registration, the Respondent submits that his acceptance of free samples from the Complainant, one of hundreds of vendors handing out free samples at a trade show attended by thousands and held more than seven years ago, is insignificant in the whole scheme of things and is certainly not evidence that he unequivocally knew of the Complainant and its alleged rights in the VENUS trademark at the time that he selected and registered the Domain Name in 2006.
As to the alleged bad faith use constituted by the “sudden” appearance of dental-related advertisements on the parked page at the web address corresponding to the Domain Name in May, 2009, the Respondent says that GoDaddy and its affiliates, and not the Respondent, were responsible for all of the advertisements appearing on the parked page. As the Complainant states, the Domain Name was parked for free with GoDaddy. The Respondent received no money from any of the advertisements appearing on the parked page and had no control over their selection. The Respondent says he was unaware of any such advertisements prior to receipt of the Complaint, whereupon he contacted GoDaddy to remove all third party advertisements and to implement use of a simple webpage announcing that the Respondent's site is “coming soon.”
The Respondent says he never received the alleged March 9, 2009 letter from the Complainant's subsidiary. That advertising related to third party dental products and services appeared on the parked page hosted by the registrar GoDaddy more than two months after the Complainant allegedly sent correspondence to the Respondent is purely coincidental.
In Hoffman-LaRoche Inc. v. Alan Truskowski, supra, the domain name was registered long after the trademark rights arose and the domain name itself suggested that it would point to a webpage where the generic of the prescription drug Xenical would be available. In contrast, the Respondent's domain name, which combines the name of the Roman goddess of beauty, “Venus,” with the common noun “smile,” does not directly communicate that any particular good or service would be available at a webpage at such address.
In Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc/ Rich Sanders and Octogen e-Solutions, supra, the domain name at issue consisted of the mark in which the complainant had prior rights dating back to the 1920s and the respondent unquestionably knew of the complainant's substantial prior trademark rights at the time of registering the domain name. None of these types of fact exist here.
The Complainant has failed to show that the Respondent has registered and used the Domain Name in bad faith. As a result, the Complaint should be denied.
To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy does not require the Complainant's trademark rights to have arisen before the Domain Name was registered: see Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038 and the cases there cited.
The Complainant's pending trademark registration application for VENUS SMILE does not give rise to trademark rights: see Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904. To succeed in a complaint under the Policy in relation to an unregistered mark, it is necessary for the complainant to show that the claimed mark has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
At the time of the filing of the Complaint, the Complainant had registered trademark rights in the marks VENUS and VENUS DIAMOND. Moreover, the Panel is prepared to find on the basis of record before it that the Complainant had acquired common law rights in the marks VENUS SMILE and VENUS WHITE.
It is well established that “essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; that the test of confusing similarity is confined to a comparison of the disputed domain name and the trademark alone: BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and that the specific top level of the domain name, in this case “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
On this basis, the Panel finds the Domain Name to be identical to the Complainant's VENUS SMILE mark. The Panel also finds the Domain Name to be neither identical nor confusingly similar to the Complainant's VENUS DIAMOND or VENUS WHITE marks. With some hesitation, the Panel is prepared to proceed on the basis that the Domain Name is confusingly similar to the Complainant's VENUS mark, on the basis that the Domain Name fully incorporates that mark and adds only the dictionary word “smile”, which in light of the Complainant's field of business, does not dispel a finding of confusing similarity. .
The Complainant has established this element of its case.
Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy: Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. Given the prior registration of the Complainant's VENUS mark, the Complainant's assertions (set out above) suffice to establish a prima facie case of lack of rights or legitimacy on the part of the Respondent.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant's rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(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;”
Even perfunctory preparations have been held to suffice for this purpose: SHIRMAX RETAIL LTD. v. CES MARKETING GROUP, INC., eResolution Case No. AF-0104; Lumena s-ka so.o. v. Express Ventures LTD (www. Skarbiec.com), NAF Claim No. 94375 and ROYAL BANK OF CANADA v. XROSS, eResolution Case No.AF-0133. On the other hand, use which intentionally trades on the fame of another cannot constitute a ‘bona fide' offering of goods or services; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
The Respondent has provided no evidence to support his claim that he intends or has ever intended to use the Domain Name to promote skin care products. There is no evidence of the date on which the draft text and artwork for his proposed webpage were created. The Respondent has therefore failed to show that the draft text and artwork were created before the Respondent received notice of this dispute. Hence the Respondent has not satisfied the requirements of the Policy, paragraph 4(c)(i).
The Panel finds that the Respondent has no rights or legitimate interest in the Domain Name. The Complainant has established this element of its case.
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish both bad faith registration and bad faith use. This requires some evidence that the Respondent was both aware of the Complainant and sought to take advantage of its mark: Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, WIPO Case No. D2008-0641 and Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902.
On the material before the Panel, the Panel is not satisfied that the Complainant had started to use the mark VENUS SMILE by the time the Respondent registered the Domain Name. There is nothing to indicate that the Respondent might have had knowledge in advance of the Complainant's intention to use the VENUS SMILE mark.
The Complainant says bad faith registration is established because the Respondent, a dentist, having accepted free samples of the Complainant's VENUS products in 2003, was aware of that mark when he registered the Domain Name.
The Panel finds it more likely than not that the Respondent did know of the Complainant's VENUS mark when he registered the Domain Name, both because he had attended a dental event in 2003 at which he accepted an offer of free VENUS goods, which he subsequently received, and because he is a dentist of long standing in the United States (where the Complainant, through its subsidiary, has been doing business since 2002) and was therefore more likely than other members of the public to have been aware of the Complainant and its VENUS mark in December, 2006.
Such knowledge is not determinative of bad faith registration, however. As found by the three-member panel in Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151, a respondent's knowledge of the complainant's mark prior to registration of the domain name is not necessarily evidence of bad faith. It all depends on the circumstances of the case.
Here the Complainant has not been shown to have started to use the VENUS SMILE mark by December, 2006, so the Respondent's selection of those two words in combination as the Domain Name do not necessarily demonstrate bad faith intent towards the Complainant, even though the Respondent was aware of the VENUS mark.
Further, for almost two and a half years following registration, the Domain Name was used as a parking page displaying links having no connection with dentistry. Indeed, as conceded in the Complaint, those links related to “science in general and to astronomy in particular (possibly because Venus is the name of the second planet from the sun)”. This is inconsistent with the conclusion that the Respondent was seeking to take advantage of the Complainant's VENUS mark when he registered the Domain Name. In The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 the three-member panel said:
“As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy. Gen.Mach.Prods. Co v. Prime Domains, NAF Case No. 92531”.
The business model considered in the Landmark case was “the registration of large numbers of dictionary words commonly searched by Internet users, [generating] revenue by providing pay-per-click advertising links related to the generic nature of each site's domain name”.
Here the use to which the Domain Name was put from the date of registration until May, 2009 is consistent with registration because of the scientific and astrological meaning of the name Venus, not with its trademark meaning in the field of dentistry.
The Panel is not prepared to infer from the Respondent's failure to produce evidence of his intent to use the Domain Name in relation to skin care products that he was targeting the Complainant's mark when he registered the Domain Name.
On balance, and taking into account the evidence of bad faith use within paragraph 4(b)(iv) of the Policy mentioned below, the Panel considers that the Complainant has not discharged its burden of proving that the Respondent was acting in bad faith when he registered the Domain Name, notwithstanding that he was aware of the Complainant's VENUS mark.
None of the circumstances set out in the Policy, paragraph 4(b)(i), (ii) or (iii) have been established.
As to bad faith use, the Panel agrees with the following passage from the decision of the three-member panel in Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902:
“The Panel has considered Respondent's submission that he is not responsible for the material appearing on the webpage associated with the domain name in dispute developed by parking service providers hired by Respondent to optimize the content of the webpage. The Panel is of the view that the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute. The Panel agrees with the Panelist in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448 who prior to quoting the findings of a number of earlier decisions on the responsibility of a domain owner for the content appearing on the webpages associated with his domain name, whether auto generated or otherwise, stated, “The Panel does not accept that the Respondent can disclaim responsibility for the various links on the Respondent's website which are concerned either with the Complainant or with the field of commercial activity in which the Complainant is a major player”.”
In May, 2009 the sponsored links started to include dentistry links. This followed the commencement of use by the Complainant of its VENUS SMILE mark and increased publicity by the Complainant for its products in the United States. It also followed a letter said to have been sent by the Complainant to the Respondent on March 9, 2009, which the Respondent says he never received. It is unnecessary to resolve this issue, since the conduct of the Respondent in permitting the display of links relating to dentistry establishes bad faith use under paragraph 4(b)(iv) of the Policy. That the Respondent had control over the webpage to which the Domain Name resolved is demonstrated by his instructions to GoDaddy to remove all third party advertising and to display a “coming soon” webpage after the Complaint was filed.
Although bad faith use of the kind described in paragraph 4(b)(iv) of the Policy is deemed by paragraph 4(b) to be evidence of both bad faith registration and bad faith use, in this case that evidence does not persuade the Panel that it outweighs the evidence pointing to the conclusion that the registration was not in bad faith.
As the learned panel found in Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902:
“Respondent's recent bad faith use under paragraph 4(b)(iv) of the Policy is not probative as to his much earlier intentions in registering the domain name.
…while Complainant may have proven that Respondent has used the domain name in dispute in bad faith, it has not succeeded in proving registration in bad faith, and as the requirements of paragraph 4(a)(iii) are conjunctive, the Complaint must fail”.
As to the conjunctive requirements, the Complainant puts forward the proposition that “recent bad faith exhibited by the Respondent is the only bad faith normally required for involuntary transfer of his domain name”, citing Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, supra. Not only does the Octogen decision fail to support such a sweeping proposition but subsequent decisions have declined to follow Octogen on the ground that it is inconsistent with the clearly worded conjunctive requirements of proof of both bad faith registration and bad faith use. See Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716 and the cases there cited.
The Panel finds that the Complainant has established bad faith use but has failed to establish bad faith registration, despite the Respondent's knowledge of the VENUS mark at the time of registration. Thus the Complainant has failed to establish this element of its case.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Dated: March 23, 2010