WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Obagi Medical Products, Inc. a/k/a OMP, Inc. v. obagivietnam.com and Phan Thanh Tung
Case No. D2014-1733
1. The Parties
The Complainant is Obagi Medical Products, Inc. a/k/a OMP, Inc. of Long Beach, California, United States of America, represented by Wood, Herron & Evans, LLP, United States of America.
The Respondent is obagivietnam.com and Phan Thanh Tung of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <obagivietnam.com> is registered with P.A. Viet Nam Company Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2014. On October 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 10, 2014, the Center transmitted an email to the parties in English and Vietnamese regarding the language of the proceeding. On October 13, 2014, the Complainant submitted its request that English be the language of the proceeding. On October 14, 2014, the Respondent submitted its request that Vietnamese as the language of the proceeding.
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 in English and Vietnamese, and the proceedings commenced on October 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2014. The Center received informal email communications from the Respondent in English and Vietnamese on October 11, 12, 14, 15, 17, 20 and November 10, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of the proceeding to Panel appointment on November 12, 2014.
The Center appointed George R. F. Souter as the sole panelist in this matter on November 26, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Language of the Proceedings
The language of the Registration Agreement in this case is Vietnamese. The Complainant requested that the language of the proceedings should be English, and advanced arguments in support of this request. The Respondent requested that the language of the proceedings should be the language of the Registration Agreement, as set out in UDRP Rule 11(a). After considerable correspondence between the Center and the Respondent, the Center wrote to the Respondent on October 20, 2014, in both Vietnamese and English, informing the Respondent that, given the provided submissions and circumstances of this case, the Center had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Vietnamese; and 3) appoint a Panel familiar with both languages mentioned above, if available.
Rule 11(a) states: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement", but makes this "subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Panel feels that the Respondent, in correspondence with the Center, has demonstrated sufficient knowledge of the English language to be able to understand the Complaint (by, for example, providing the Center with English translations of its Vietnamese e-mails), and has been given the opportunity to file a response in Vietnamese. The Panel takes the view that the language arrangement proposed by the Center in its e-mail to the Respondent of October 20, 2014 (see above), in affording the Respondent the opportunity to articulate arguments in a Response to the Complaint in Vietnamese, which gives both parties the opportunity to present their respective arguments in their respective language of choice, is equitable to both parties, in the circumstances of the present case. The Panel, accordingly, using the Panel's discretion under Rule 11 of the UDRP, decides that the language of the proceedings in this case, in so far as the Complaint and the Decision is concerned, should be English, and, in so far as the Response is concerned, should be Vietnamese.
4. Factual Background
The Complainant is a specialty pharmaceutical company founded by leading skin care experts in 1988. It has registered its OBAGI trademark in over 60 countries, including Viet Nam, and details of such registrations have been supplied to the Panel.
The disputed domain name was registered on November 1, 2012.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its OBAGI trademark, containing the trademark in its entirety with the sole addition of the geographical term "vietnam".
The Complainant states that it has given no authorization to the Respondent to use its mark in the disputed domain name and there is no connection between the Parties. Further, to the best of the Complainant's knowledge, the Respondent does not qualify for any rights or legitimate interests in the disputed domain name under any of the justifications set out in the UDRP.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website which, as admitted by the Respondent, resells OBAGI products without the Complainant's permission, authorization, or licence.
The Respondent did not file any formal response. Though the Center received informal emails from the Respondent in both English and Vietnamese, such emails have not substantively addressed the contentions in the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g. ".com", ".info", ".net", ".org") may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator ".com" to be irrelevant in the present case.
It is well established in prior decisions under the UDRP that the mere addition to a trademark in which a complainant has rights of descriptive or non‑distinctive elements is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the Panel is of the opinion that the geographical name "vietnam" is clearly a descriptive or non-distinctive element, and, accordingly, finds that the disputed domain names is confusingly similar to a trademark in which the Complainant has rights, and that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel regards the arguments put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Further, because the website at the disputed domain name does not contain an accurate and prominent disclosure of the Respondent's relationship with the Complainant (or lack thereof), the Panel finds that the unauthorized use of the disputed domain name to resell the Complainant's products does not constitute a bona fide offering of goods or services. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Respondent was clearly aware of the Complainant's OBAGI mark, as sufficient for the Panel to find that the disputed domain name was registered in bad faith, and the Panel so finds.
In this case, the Respondent is using the website operated under the disputed domain name to resell OBAGI products in a way that implies that it is doing so with the Complainant's permission, authorization, or licence, when this is not the case. In the circumstances of this case, this misleading use of the disputed domain name is use in bad faith.
Moreover, the Complainant has a firm policy that its products are sold only through authorized resellers, and it makes this corporate policy clear on its own website. One of the reasons for this policy is that the Complainant's products often require a prescription from a medical professional. Obviously, the sale of the Complainant's products under its OBAGI mark by unauthorized dealers can be to the detriment of the Complainant's business.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <obagivietnam.com> be transferred to the Complainant.
George R. F. Souter
Date: December 10, 2014