WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nestlé Skin Care Company and Galderma S.A. v. Domains By Proxy, LLC / Branko Lepan
Case No. D2015-0420
1. The Parties
The Complainants are Nestlé Skin Care Company of Egerkingen, Switzerland and Galderma S.A. of Cham, Switzerland, represented by Lombard & Geliebter LLP, United States of America.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Branko Lepan of San Clemente, California, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <nutraderm.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2015. On March 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2015, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on March 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 18, 2015.
The Respondent sent an email communication on March 16, 2015 requesting clarification about the proceedings and informing its current mailing address.
The Center verified that the Complaint together with the amended 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 March 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2015. The Response was filed with the Center on April 7, 2015.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 14, 2015. 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. Preliminary Issue - Consolidation of Complainants
The Panel notes that the present Complaint has been filed by multiple Complainants. On this subject, paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides inter alia as follows:
“Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
Although the Complaint provides for two Complainants and lists their respective rights and interests, the Complainants did not expressly request consolidation, nor did they address the relevant criteria. While intending joint complainants (including the present Complainants) would do well to make a formal request for consolidation of their respective complaints and to include submissions on the relevant criteria, the Panel in the present matter is content that it has sufficient material before it to be able to make a determination on this preliminary issue.
As set out in greater detail in the Factual Background section below, both the first and second Complainants share rights in the mark NUTRADERM of a longstanding nature. Together, they allege in the Complaint that the disputed domain name has been registered and is being used in a manner which targets those rights in a similar fashion. Accordingly, the Panel finds that the Complainants have established a specific common grievance against the Respondent which would affect the Complainants’ individual rights on substantially the same basis. There is no apparent prejudice to the Respondent from allowing consolidation and the Respondent has not raised the issue in his Response.
The Panel considers in all of the above circumstances that it would be procedurally efficient to allow the Complainants to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. With regard to the remedy sought by the Complainants, the Panel notes that, if the Complaint succeeds, the Complainants have specifically requested that the disputed domain name be transferred to the First Complainant, Nestlé Skin Care Company.
5. Factual Background
The Complainants are an aktiengesellschaft and a société anonyme respectively, both based in Switzerland. The Complainants are multi-national researchers, developers, manufacturers, wholesalers and retailers of pharmaceutical and dermatological products. The Complainants are both owned by Nestlé S.A. Galderma S.A., the Second Complainant, is the second largest dermatological company in the world, owning at least 31 subsidiaries worldwide and having total annual sales in 2013 exceeding EUR 1.7 billion.
Between them, the Complainants claim to own at least 150 active registered trademarks or applications for the mark NUTRADERM in more than 50 jurisdictions worldwide, covering international classes 3, 5, 10 and 44. For example, Nestlé Skin Care Company, the First Complainant, is the owner of United States of America (“USA”) federal registered trademark No. 708841 for the word mark NUTRADERM in international class 3 (skin lotion), registered on December 20, 1960. The said mark has been used in commerce by the First Complainant and its predecessors in title since January 21, 1960. The Second Complainant owns registered trademarks for the word mark NUTRADERM in a variety of other jurisdictions such as Brazil, Canada and Mexico dating from the 1960s, 1970s and 1980s.
According to a screenshot from the website “www.linkedin.com” produced by the Complainant, the terms of which were expressly adopted by the Respondent in his Response, the Respondent is a Director of IT based in California and was formerly a Research Scientist at the University of California, Irvine. According to WhoIs records, the disputed domain name was created on March 7, 2000. The Respondent says that the disputed domain name has been used for a private health and medical research site since its creation date.
Historic screenshots from the Internet Archive “WaybackMachine” show that from about 2010 the website associated with the disputed domain name has featured an “HTTP 302” redirect to a website at “private.lepan.com”. Upon arrival at the latter website, the visitor is presented with a web page stating “You do not have permission to view this site. Your IP address is not permitted.”
6. Parties’ Contentions
The Complainants contend that the disputed domain name is confusingly similar to trademarks in which the Complainants own rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainants assert that there is no IP address checking on the “private.lepan.com” website and that this is a static page which is independent of a user’s IP address. The Complainants note that the website offers no registration service or other method to obtain access to the allegedly restricted page. The Complainants note that according to the “WaybackMachine” the disputed domain name was not active other than redirecting to “private.lepan.com” on six dates between 2010 and 2014. The Complainants contend that this indicates that there has been no valid use of the disputed domain name.
The Complainants assert that the disputed domain name is identical to their NUTRADERM trademark, which dates back 40 years before the registration of the disputed domain name. The Complainants note that they are unaware of any use or demonstrable preparations for use of the disputed domain name at all over the 15 years of its registration, whether in connection with a bona fide offering of goods or services or otherwise. The Complainants submit that the Respondent has never been commonly known by the disputed domain name or the NUTRADERM trademark and point out that their respective marks were registered long before the disputed domain name was created. The Complainants assert that the “302 error” shown on the website associated with the disputed domain name and the private nature of the registration both indicate that the Respondent cannot claim to be commonly known by the name “Nutraderm” or by the disputed domain name. The Complainant says that there are no registrations or applications for a trademark incorporating NUTRADERM that grants superior rights to the Respondent.
The Complainants contend that the Respondent has conceded the use of the disputed domain name in connection with competing goods or services, namely, “health informatics and educational information related to skin health and research”, which the Complainants state infringes their trademarks. The Complainants add that, being in the USA, the Respondent had constructive notice of the Complainants’ prior rights in the NUTRADERM mark.
The Complainants contend that the lack of any legitimate product or service on the website associated with the disputed domain name over a 15 year period in tandem with the lack of any cognizable prior rights in NUTRADERM means that the Respondent registered the disputed domain name to prevent the Complainants from reflecting their mark in a corresponding domain name. The Complainants also contend that the use of their trademark to redirect Internet users whose IP addresses may be authorized to “private.lepan.com” and whatever products or services may be offered there constitutes use for commercial gain even if such gain is the increased value of the <lepan.com> domain name due to the traffic generated because of the Complainants’ trademark. The Complainants note that while there may not be a visible counter on the website as in a previous case under the Policy, the Respondent can nevertheless count the hits received and use this information to value its website, such use being commercial in nature.
The Complainants assert that the use of a private or proxy registration for the disputed domain name means that the Respondent seeks to conceal its identity. The Complainants contend that inactive or passive use may result in bad faith, noting that relevant factors to previous panels in such circumstances have been the strength of the prior trademark, absence of evidence of good faith, the respondent’s attempt to conceal its identity and the respondent’s provision of false or inaccurate information. With regard to the strength of their trademarks, the Complainants contend that the First Complainant’s USA mark is incontestable and immune from challenge on the basis of descriptiveness or lack of secondary meaning. The Complainants add that the Respondent failed to keep his contact details up to date and that the private registration was not isolated but led to another domain name, <lepan.com> that was also privately registered. The Complainant points to the Respondent’s admission in an email to the Center that its contact information was out of date and argues that the Respondent’s willful abrogation of its affirmative responsibility equates to bad faith.
The Complainants note the terms of the warranty given by the Respondent to the Registrar that, to the best of the Respondent’s knowledge and belief, neither the disputed domain name nor its use infringes the rights of any third party. The Complainants add that if the Respondent carried out a trademark search the registration violated such warranty and that if the Respondent did not do so it improperly represented to the Registrar that it had rights when it did not. In either case, the Complainants contend that the Respondent acted in bad faith. The Complainants note that a cursory search in any one jurisdiction would have revealed the Complainants’ prior marks. The Complainants contend that the Respondent had constructive if not actual notice of the Complainants’ prior rights and that the fact that it registered the disputed domain name with such notice in a private registration means that it was registered for the purposes of preventing the Complainants from reflecting their mark in such domain name.
The Complainants submit that given their extensive use and registration of their NUTRADERM mark, it is highly improbable that the Respondent has selected the name without first having noticed the Complainants’ trademark registrations and their wide reputation, on the market for 40 years at that time. The Complainants state that an Internet user entering the disputed domain name is more likely than not expecting to arrive at a website hosted by the Complainants, being the holders of numerous registered trademarks for the corresponding mark.
The Complainants note that the entire first page of a “Google” search result for “nutraderm” identifies references which all relate to the Complainants’ and their products and trademark. The Complainants state that the lack of a website at the disputed domain name will lead consumers to be confused as to the status of the Complainants’ product or its availability in their particular geographic location.
The Complainants assert that the NUTRADERM mark is distinctive and has been in continuous use since 1960. The Complainants submit that it is a strong mark and is contrasted with a lack of evidence of good faith by the Respondent including concealment of its identity.
The Respondent requests the Panel to deny the remedies requested by the Complainant.
The Respondent asserts that the disputed domain name has been used as a private health and medical research site that focuses on skin health informatics for use by an “access controlled” group of international healthcare professionals and researchers since its creation date on March 7, 2000. The Respondent notes that it has owned, managed and been financially responsible for the operation of the disputed domain name over 15 years of “private and proper ownership”. The Respondent notes that the Complaint is the first time that it has ever been contacted regarding the Complainants’ trademark.
The Respondent states that his group stores, shares and posts private and confidential health and medical related information regarding skin research and patient information. The Respondent submits that no products or services are provided or sold at the disputed domain name and that it does not conflict in any way with the Complainants’ trademark.
The Respondent notes (with reference to an extract from a page relating to it on “www.linkedin.com” which was produced by the Complainant) that the Respondent has been in the research industry since 1990 and has been focused on IT related medical informatics for all of that time. The Respondent explains that the disputed domain name serves as a portal for exchange of sensitive information regarding “Health in Dermatology”, hence “Nutraderm”. The Respondent adopts the Complainants’ screenshots for its own case and submits that these demonstrate that the website associated with the disputed domain name has always been private and that there has been no attempt to cause confusion for commercial gain.
The Respondent submits that the disputed domain name was intentionally registered privately “due to the nature of the information we capture, store, and manage”. The Respondent adds that patient and research information requires utmost security and that the private registration was undertaken as a security precaution to prevent any malicious attacks or actions against his users and data.
The Respondent insists that the IP address of the user is checked by his website and that if this fails the system automatically redirects to “private.lepan.com” for security restriction purposes. The Respondent notes that he is the owner of <lepan.com>, corresponding to his personal name. He adds that such domain name was also privately registered to prevent malicious attacks and with no bad faith intended. The Respondent explains that he added the additional security option, offered by the Registrar, to prevent cyber attacks and theft of information.
The Respondent asserts that he has “a group of medical and research professionals that rely upon this site to share confidential data, and that these data might be compromised”. The Respondent adds that the corresponding website is “a private portal for use by a governed group of vetted professionals”, and notes that he has invested a significant amount of time and resources to maintain the group’s needs and confidential medical and research information.
7. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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
The Panel is satisfied that the Complainants have demonstrated that each of the Complainants has rights in their respective registered trademarks for the word mark NUTRADERM, as cited in the Factual Background section above. Disregarding the generic Top-Level Domain (gTLD) suffix “.com” for the purposes of comparison, as is customary in cases under the Policy, the Panel notes that the second level of the disputed domain name is alphanumerically identical to the Complainants’ trademarks. The Respondent does not dispute this in his Response.
In all of these circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainants have established such a prima facie case, based upon their assertions that they have identified no use or demonstrable preparations to use the disputed domain name by the Respondent in connection with a bona fide offering of goods or services, that the Respondent has never been or could not claim to be commonly known by the name “Nutraderm” or by the disputed domain name itself, and that there are no registrations or applications for a trademark for such term granting superior rights to the Respondent.
Once the panel has found that a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name under the Policy, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests. In the present case, the Response focuses on the Respondent’s alleged use of the disputed domain name since its creation for the purposes of a closed group website relative to “skin health informatics”. This could conceivably have provided some foundation for a demonstration of rights or legitimate interests by the Respondent. However, the Response contains only bare assertions without any supporting evidence. In the Panel’s opinion, given the nature of the Respondent’s case, it should have been a relatively simple matter for the Respondent to have brought forward suitable evidence sourced from a wide range of potential supporting materials, including, for example, screenshots showing behind the veil of the alleged “access controlled” website. While the Respondent states that the site contains patient confidential material, anything of that nature could have been redacted. Alternatively, the Respondent could have produced supporting statements from the alleged vetted international healthcare professionals who are said to have used the site since 2000 or he could perhaps have pointed to references to the domain name or website in suitably independent and fact-checked official publications. The Respondent’s failure to provide anything whatsoever to support his submissions, despite the fact that he claims to have used the disputed domain name for the same purpose over the entire 15 years since the date of its creation and to have invested significant resources therein, leads the Panel to make the reasonable inference that there are no such materials available.
Although he has not produced evidence of his own, the Respondent has commented on items produced by the Complainants, namely the historic screenshots of the redirect taken from the “WaybackMachine”, and the Respondent’s page on “www.linkedin.com”. In the Panel’s opinion neither of these provides much in the way of support for the Respondent’s case. The Respondent’s “LinkedIn” page does indicate that the Respondent has a background in research, albeit that it does not mention the website associated with the disputed domain name, nor indeed does it demonstrate on the balance of probabilities that the Respondent has been involved in health informatics over the life of the disputed domain name. The Respondent is said to have been involved in information technology as a Senior Solutions Architect and thereafter as a Director of IT for the entirety of that period and the nature of the company in which the Respondent is said to have held those positions is not further described.
In any event, it is the Panel’s opinion that a “LinkedIn” page must necessarily be accorded no more than the limited degree of weight typically afforded by panels under the Policy to pages from “www.wikipedia.com” given that, in the case of both websites, entries are not subject to fact checking and are user-editable resources. See, for example, the Panel’s comments in Konga Online Shopping Limited v. Rocket Internet GmbH, Arnt Jeschke, WIPO Case No. DSC2014-0001 and in Aktiebolaget Electrolux (AB Electrolux) v. Peter Mazsa, WIPO Case No. D2014-1761, both under reference to Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431.
It should be added that the Respondent’s background as a researcher, even if this had been proved to the Panel’s satisfaction, would not in itself provide much in the way of support to the Respondent’s assertions regarding his alleged use of the disputed domain name over the past 15 years. Furthermore, the historic screenshots from the “WaybackMachine” do not indicate anything more to the Panel than that the associated website has had a redirect in place since 2010. Such redirect may or may not be part of the alleged IP address checking facility but the Respondent has not demonstrated this to the Panel’s satisfaction.
In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainants’ prima facie case and that the requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied.
C. Registered and Used in Bad Faith
As noted in the preceding section, the Panel finds that no evidence has been put forward by the Respondent in support of the submission that the disputed domain name is in use for a closed group website relative to “skin health informatics”. Accordingly, there is no evidence before the Panel of any active use of the disputed domain name. As the Complainants note, passive holding of a domain name does not as such prevent a finding of registration and use in bad faith. In order to assess the question of bad faith, the Panel must examine all the circumstances (see paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The first circumstance that the Panel considers relevant in the present case is that the relied-upon trademark is distinctive and had been in existence and in active use in the Respondent’s jurisdiction for some 40 years prior to the registration of the disputed domain name. The Panel notes that the Respondent does not deny knowledge of such trademark. Instead, the Response claims that the name “Nutraderm” in the disputed domain name was arrived at not by virtue of the corresponding trademark but because the term also means “Health in Dermatology”.
The Panel can understand why the abbreviation “derm” might be employed in the name of a site relating to skin health informatics, given that it may be taken to be part of the word “derma”, the Greek root of many words in English relating to skin including both “dermal” and “dermatology”. Why though would the Respondent choose to add the prefix “nutra” to this? Does that prefix denote “health” or confer an overall meaning to the composite term “Nutraderm” of “Health in Dermatology”? The Respondent refers the Panel to no material whatsoever in support of his assertion that it does. In the absence of this, the Panel is itself unaware of any way in which the term is capable of conveying such meaning.
The Respondent’s failure to provide an adequate explanation for its selection of the name “Nutraderm” is the second relevant circumstance to the question of bad faith. In the Panel’s view it is a particularly critical failure for the Respondent’s case and points strongly in the direction of bad faith. When the prefix “nutra” is added to the abbreviation “derm”, the resulting name in the disputed domain name is not a word or phrase having the meaning suggested by the Respondent but rather becomes an exact match for the Complainants’ trademark. The Panel is thus left with the impression that the Respondent’s explanation has been “reverse engineered” as a seemingly plausible alternative to the reality that NUTRADERM only denotes the Complainants’ mark and that the Respondent was targeting such mark through its registration and use of the disputed domain name.
The final circumstance which the Panel considers relevant to the question of bad faith in this case, as discussed more fully in the preceding section, is the fact that the Respondent has given an account of his use of the disputed domain name which he has been entirely unable to support by way of any evidence, leading the Panel to make the reasonable inference that no such evidence is available.
In light of all of these circumstances, the Panel concludes on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith. The Panel notes in passing that the Response touches upon the Complainants’ delay in bringing the Complaint, albeit that the Respondent does not elucidate as to the significance of any such delay for its case. As noted above, the Panel considers that if the disputed domain name is said to have been in use for any period it is entirely reasonable to expect the Respondent to produce some sort of evidence of this. If a respondent’s case is that there has been use over a particularly lengthy period involving the investment of substantial time and resources, it should be even more straightforward for it to be able to access suitable materials. The Panel adds for completeness that it adopts the view expressed in paragraph 4.10 of the WIPO Overview 2.0 that delay in bringing a complaint does not of itself prevent a complainant from being able to succeed under the Policy where, as here, that complainant has established a case on the merits under the requisite three elements.
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 <nutraderm.com> be transferred to the first Complainant (Nestlé Skin Care Company).
Andrew D. S. Lothian
Date: April 28, 2015