WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayer Healthcare LLC v. Admin, Domain
Case No. D2016-2342
1. The Parties
Complainant is Bayer Healthcare LLC of Whippany, New Jersey, United States of America ("United States"), represented by Reed Smith LLP, United States.
Respondent is Admin, Domain of Miami, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <scholls.com> 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 November 16, 2016. On November 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 21, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 11, 2017. 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 registrations for the word, stylized word, and word and design trademark DR. SCHOLL'S on the Principal Register of the United States Patent and Trademark Office ("USPTO"), including word trademark registration number 1,255,028, registration dated October 25, 1983, in international classes ("ICs") 5, 10 and 25, covering, inter alia, foot treatment preparations, padding materials for orthopedic use, and foot apparel, as further specified, and; word and design trademark registration number 1,257,297, registration dated November 15, 1983, in ICs 3, 5, 10 and 25, covering, inter alia, foot care preparations, foot treatment preparations, padding materials for orthopedic use, and foot apparel, as further specified.
Complainant states that use in commerce by its predecessors in interest of the DR. SCHOLL'S trademark dates back to the early 1900s. According to Complainant, it has invested tens of thousands of dollars in advertising and promoting its DR. SCHOLL'S "family of products" in each of the preceding five years, and Complainant suggests that the DR. SCHOLL'S brand may be worth a substantial dollar amount. Complainant designs and manufactures foot care products, including insoles, inserts, orthotics and shoes. It sells those products under the DR. SCHOLL's trademark through food, drug, convenience, retail and mass outlet stores across the United States and on the Internet via retailers such as Amazon and Walmart. Complainant operates a commercial Internet website at "www.drscholls.com". Complainant promotes its products via various social media outlets.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on February 19, 1998. The Registrar's verification does not indicate whether Respondent was the registrant of the disputed domain name at the time of creation (although there is no indication on the record of this proceeding that the creation registrant was a party other than Respondent).
As of August 29, 2016, the disputed domain name was being used to direct Internet users to a website captioned "Scholls.com". The homepage of the website included links to "DR Scholls shoes" (misspellings in original), "Shoes Inserts", "Scholls Orthotics" and other links related to foot-related products. Respondent's homepage also included sponsored listings for department stores and others selling Complainant's products as well as third-party shoes. The homepage indicated that copyright in the webpage was held by "Voodoo.com, Inc.". The website operated at <voodoo.com> stated "Voodoo.com is a domain parking platform that was built from the ground up to allow you to make the most money on your domains. We help you manage your domain portfolio and give you all of the tools necessary to make the best decisions for your domains." As of the date of this decision, the content previously on Respondent's website has been removed, other than the heading "Scholls.com" and an inactive search bar.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it holds rights in the trademark DR. SCHOLL'S and that the disputed domain name is confusingly similar to its trademark.
Complainant contends that its DR. SCHOLL'S trademark is famous in connection with high quality foot care products.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) the disputed domain name bears no relationship to any legitimate business of Respondent; (2) "parked sites" are not bona fide offerings of goods or services for purposes of the Policy; (3) Respondent has not shown demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services; (4) Respondent has never been commonly known by the disputed domain name, and; (5) Complainant has not authorized Respondent to use its trademark in the disputed domain name.
Complainant contends that Respondent registered and is using the disputed domain in bad faith because: (1) Complainant's DR. SCHOLL'S trademark is famous and Respondent's bad faith is therefore presumed, and; (2) Respondent purchased the disputed domain name which bears no relationship to Respondent and that is essentially identical to Complainant's trademark, and is using that disputed domain name to divert Internet users from Complainant to profit from pay-per-click services on Respondent's parked website.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Respondent did not reply to email notification. The express courier delivery service indicated that the address provided by Respondent in the record of registration of the disputed domain name is incomplete and/or incorrect. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark DR. SCHOLL'S, including through multiple registrations at the USPTO and by use in commerce in the United States (see Factual Background supra). Respondent has not contested Complainant's trademark rights. The Panel determines that Complainant has rights in the trademark DR. SCHOLL'S.
The disputed domain name incorporates the principal element ("SCHOLLS") of Complainant's trademark, leaving out the prefatory abbreviated professional identifier "DR."1 Complainant's trademark is well-known in the United States in connection with foot care products. From the perspective of visual impression, sound and meaning, the disputed domain name is substantially similar to Complainant's trademark. An Internet user viewing the disputed domain name alone would likely confuse it with Complainant's trademark. Moreover, Respondent used the disputed domain name specifically to direct Internet users to a webpage referring to Complainant's full trademark, suggesting that Respondent relied on Internet user confusion to direct Internet users to its website. This evidence of intent to confuse on the part of Respondent reinforces the conclusion that the disputed domain name is confusingly similar to Complainant's trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant's trademark.
The Panel determines that Complainant has rights in the DR. SCHOLL'S trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"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". (Policy, paragraph 4(c))."
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant's prima facie showing of lack of rights or legitimate interests.
Respondent's use of the disputed domain names in connection with a parking page incorporating links to Complainant's products and the products of third-party competitors does not establish rights or legitimate interests in favor of Respondent in the disputed domain name. Respondent's use of the disputed domain names does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith." Those are: "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The disputed domain name was registered in 1998, but Complainant asserts it did not become aware of the disputed domain name until 2016. The reason for this delay is not explained by Complainant. The preponderance of decisions under the Policy reflect the view that delay by a complainant in initiating a proceeding does not establish a defense for a respondent, i.e. that there is not a doctrine of laches generally operating under the Policy. See, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, 2011 ("WIPO Overview 2.0"), at para. 4.10. While certain circumstances have justified holdings otherwise, the instant proceeding does not present such circumstances. The Panel does not consider that Complainant's delay in initiating this proceeding establishes a defense in favor of Respondent.
Second, the disputed domain name was initially registered before the Policy was approved by ICANN on October 24, 1999. In early years of disputes under the Policy, it was not uncommon for contested domain name registrations to have preceded the adoption of the Policy. The fact that a disputed domain name had initially been registered prior to adoption of the Policy was not a defense. See, e.g., by this Panel, Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044, and Sport Chalet, Inc. v. Ski Chalet, Inc., WIPO Case No. D2000-1834. The Registrar's verification in this proceeding confirms that the disputed domain name is subject to the Policy. While proceedings involving domain name registrations that pre-date adoption of the Policy are not so common today, the Panel discerns no reason to modify the customary practice. Respondent is held to the standards of the Policy.
The disputed domain name has been used by Respondent in a manner that appears intended to cause Internet user confusion with Complainant's trademark that is well-known in connection with foot care products. Complainant's trademark was long-registered and used widely in the United States at the time of Respondent's registration of the disputed domain name in 1998. Respondent knew or should have known of Complainant's trademark registration at the time of registration of the disputed domain name.
Respondent is using the disputed domain name intentionally to attract for commercial gain Internet users to Respondent's website by creating confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent's website. Respondent, inter alia, is providing links to third-party competitors of Complainant on its website via pay-per-click advertisements. This constitutes abuse of Complainant's trademark rights. See, e.g., The American Automobile Association, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd., WIPO Case No. D2010-0565.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning 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 <scholls.com> be transferred to Complainant.
Frederick M. Abbott
Date: January 25, 2017
1 Domain names do not incorporate apostrophes, and the absence of the apostrophe is not material to this assessment of confusing similarity.