WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ho Hoi Ming Michael, VGH Solutions ("Dr Ho") v. EHM All Things Healthy, LLC
Case No. D2014-1753
1. The Parties
The Complainants are Ho Hoi Ming Michael and VGH Solutions, Markham, Ontario, Canada, represented by Venable, LLP, United States of America.
The Respondent is EHM All Things Healthy, LLC, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <drhosnow.com> (the "Disputed Domain Name") is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 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.
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 October 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2014. No formal Response was filed with the Center. However, several brief emails were received from Respondent.
The Center appointed John Swinson as the sole panelist in this matter on November 19, 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.
4. Factual Background
The Complainants are Ho Hoi Ming Michael, who is known as "Dr Ho", and his family business, VGH Solutions, which distributes his products (collectively, the "Complainant"). The Complainant provides consumers with natural medicine and self-care products.
The Complainant owns the following trade mark registrations for DR-HO'S:
- US Trade Mark Registration No. 4,461,497 for DR-HO'S word mark (registered January 7, 2014); and
- US Trade Mark Registration No. 4341590 for DR-HO'S word and design mark (registered May 28, 2013),
collectively, the "Trade Mark".
The Respondent is EHM All Things Healthy, LLC. The Respondent did not file a formal Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on November 24, 2011.
The website at the Disputed Domain Name currently displays a blank "template" website for a business. In the past, the website has advertised "Dr-Ho's" branded goods, using a logo trade mark which differs from the Complainant's logo mark. The goods sold on the website were the same type of goods that the Complainant sells.
5. Parties' Contentions
The Complainant's contentions are as follows.
Identical or Confusingly Similar
The Disputed Domain Name consists of the Trade Mark and a generic term (i.e. "now"). The Disputed Domain Name is confusingly similar to the Trade Mark in appearance, sound, connotation and commercial expression.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Disputed Domain Name was registered to sell counterfeit versions of the Complainant's products.
In a signed declaration annexed to the Complaint, Dr Ho states the following:
- the Complainant has not authorized the Respondent to sell the Complainant's goods or use the Complainant's instructional models;
- the goods displayed on the website at the Disputed Domain Name are not in their proper packaging (they are shown in plastic bags);
- the goods on the website at the Disputed Domain Name look different from the Complainant's authentic goods and do not bear the correct trade mark (the Complainant exhibits replacement gel pads as an example); and
- the price of the goods on the website at the Disputed Domain is far below the price of the Complainant's authentic goods.
Registered and Used in Bad Faith
The Disputed Domain name was acquired and is being used in bad faith. The Respondent knew the Complainant had rights in the Disputed Domain Name and acquired it for commercial gain.
The Respondent is using the website at the Disputed Domain Name to sell counterfeit versions of the Complainant's products.
The Respondent did not formally reply to the Complainant's contentions. However, it emailed the Center on several occasions advising that "this website drhosnow.com was removed" and that "the drhosnow.com domain name is not in use and is for sale".
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response.
A. Procedural Issues
A respondent's failure to file a response does not automatically result in a decision in favor of the Complainant (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). However, the Panel may draw appropriate inferences from the Respondent's failure to submit a formal Response.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel has verified that the Complainant has rights in the Trade Mark.
The Disputed Domain Name is a combination of the Trade Mark (excluding the hyphen and apostrophe) with the descriptive term "now". The Panel finds that the Trade Mark remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive or laudatory term (such as "now") to a trade mark does not prevent confusingly similarity (see e.g. Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059 and cases cited therein).
In this case, the ".com" suffix at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and may be ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
It is clear that the Disputed Domain Name is confusingly similar to the Trade Mark. As such, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that Complainant has made out a prima facie case, as the Respondent has not:
- used or made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services;
- been commonly known by the Disputed Domain Name;
- been authorized by the Complainant to use the Trade Mark; or
- been making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.
The Panel is willing to accept the Complainant's submission that the Respondent was using the website at the Disputed Domain Name to sell counterfeit versions of the Complainant's products. Accordingly, the Panel can infer that the Respondent was attempting to derive revenues from the sale of counterfeit or unauthorized products. UDRP panels have previously ruled that the use of domain names to sell counterfeit products is not a legitimate use of the domain name (see e.g. Guccio Gucci S.p.A. v. Smith Davilv, WIPO Case No. D2012-0052 and cases cited therein).
At present, there is no evidence to show that the Disputed Domain Name is being used. In such circumstances, there is no current offering of goods or services under the Disputed Domain Name, legitimate or otherwise.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the circumstances, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) is particularly relevant here and provides that there is evidence of bad faith where a domain name is "used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that web site or location".
The registration of the Trade Mark post-dates the registration of the Disputed Domain Name. The Complainant submits that it had rights in the Trade Mark prior to its registration. The Panel has conducted some searches, which it is entitled to, to verify this submission. It notes that the Trade Mark has been used on the Complainant's website at "www.drhonow.com" since as early as June 2000, according to the WayBack Machine.
The Respondent's registration of a domain name that wholly incorporates the Trade Mark, and that is almost identical to the Complainant's own registered domain name and was used to sell similar goods, indicates that the Respondent:
- was aware of the Complainant and its Trade Mark at the time it registered the Disputed Domain Name; and
- registered the Disputed Domain Name to mislead Internet users into thinking that its website and products are in some way connected, sponsored or affiliated with the Complainant and its business/products, or that the Respondent's activities are approved or endorsed by the Complainant.
The Respondent has been trading off the Complainant's reputation to lead Internet users to a website which sells either counterfeit or unauthorized DR-HO'S products or competing products, for commercial gain (see e.g. Guccio Gucci S.p.A. v. Domain Administrator – Domain Administrator, WIPO Case No. D2010-1589 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019). In the circumstances, this constitutes bad faith (see e.g. Nike, Inc. v. No Owner / Ashkan Mohammadi, WIPO Case No. D2013-1297 and cases cited therein).
In light of the above, the Panel finds that the Complainant has succeeded on the third element 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, <drhosnow.com>, be transferred to the Complainant.
Date: November 25, 2014