WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Obagi Medical Products, Inc., AKA OMP, Inc. v. Reactivation Period / S Saribay, Hotlink Media, LLC
Case No. D2017-0683
1. The Parties
The Complainant is Obagi Medical Products, Inc. AKA OMP, Inc. of Irvine, California, United States of America (“United States”), represented by Wood, Herron & Evans, LLP, United States.
The Respondent is Reactivation Period of Kirkland, Washington, United States / S Saribay, Hotlink Media, LLC of Las Vegas, Nevada, United States.
2. The Domain Name and Registrar
The disputed domain name <obagiclear.net> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2017. On April 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2017, the Registrar transmitted by email to the Center its verification response 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 Complainant on April 20, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 24, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2017.
The Center appointed Neil J. Wilkof as the sole panelist in this matter on June 6, 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
The Complainant is the owner, inter alia, of the following registrations:
United States Registration No. 2,203,028 for the mark OBAGI, in international class 3, registered on November 10, 1998;
United States Registration No. 2,838,565 for the mark OBAGI, in international class 5, registered on May 4, 2004;
United States Registration No. 2,786,594 for the mark OBAGI, in international class 44, registered on November 25, 2003 (jointly hereinafter: “OBAGI” or the “Mark”).
The disputed domain name, <obagiclear.net> (hereinafter: the “Disputed Domain Name”), was registered on January 16, 2008.
5. Parties’ Contentions
The Complainant has, as early as July 18, 1989, used the Mark in various formats in connection with a wide range of skin care products and services, including skin cream, clearing cream, toner, moisturizer, medicated skin care preparations, clarifiers, sunscreens, blending creams, acne treatment preparations, medical services for skin treatment, health spa services and medical spa services.
The Complainant is the owner of numerous registered marks, consisting of, or containing the word OBAGI, both in the United States and in other countries around the world.
The Respondent registered the Disputed Domain Name in January 2008, nearly 10 years after the earliest registration of the Mark by the Complainant and 20 years after the earliest use of the Mark. The Complainant has used the Mark in the advertising, promotion and sale of various goods and services in the United States and in numerous other countries around the world.
The site that has been operated under the Disputed Domain Name has contained advertising links to other websites in the area of skin care products and services. The confusing use of the Mark as part of the Disputed Domain Name diverts traffic to the Respondent’s website, and the Respondent benefits from revenues received from click-through commissions in respect of these ads.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
According to paragraph 4(a) of the Policy, the Complaint must prove the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well-established that “a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP” (Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888). See also WIPO of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO 3.0”) para. 1.7 hereinafter “WIPO 3.0”), which states as follows:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
In the instant case, the Disputed Domain Name wholly incorporates the Complainant’s OBAGI mark. Confusing similarity between the Disputed Domain Name and the Mark is further evidenced by the fact that the first part of the Disputed Domain Name consists solely of the Mark. It is well-recognized that a person encountering a name or mark is likely to give greater attention to the first part thereof. Here, as stated, the first part of the Disputed Domain Name is identical to the OBAGI mark.
The addition of the word “clear” as part of the Disputed Domain Name is not to the contrary. The word “clear” is defined by “www.dictionary.com” as “without discoloration, defect, or blemish: a clear complexion.” It is therefore a word that is connected with a desired characteristic of a person who uses skin care products. As such, the word as part of the Disputed Domain Name gives the false impression that the Respondent is in some way connected to the Complainant’s skin care products.
In so doing, the presence of the word “clear” only serves to exacerbate the confusion between the Mark and the Disputed Domain Name. See Inter IKEA Systems B.V. v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1874, ruling that the domain name <ikea.buzz> is confusingly similar to the mark IKEA (“…to the extent “.buzz” denotes news and information about “Ikea” this would exacerbate confusion.”) The result is the same whether the additional word is deemed “descriptive” or “suggestive”; in either case, the word only “…serves to heighten rather than to dispel the risk of confusing similarity.” See Leica Geosystems AG v. Altair D’Arcangelo, Case No. D2011-1922.
The addition of the generic Top-Level Domain (“gTLD”) suffix net”, has long been held to lack any distinctive power in determining whether a mark is confusingly similar to a disputed domain name. As stated in WIPO 3.0, para. 1.11.1—“[t]he applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”
The panel in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, concluded that “neither the addition of an ordinary descriptive word nor the suffix “.com” detracts from the overall impression of the dominant part of the name, namely the trademark SONY”. Having regard to the OBAGI mark, the same applies to the instant situation.
Based on the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Mark.
B. Rights or Legitimate Interests
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the Disputed Domain Name. There is no evidence that the Respondent has registered any mark that consists of, or contains, the Mark, or any material portion thereof. The Respondent’s name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Mark or the Disputed Domain Name. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the Mark or that the Respondent has ever been authorized to serve as a franchisee of the Complainant.
Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the disputed domain name, the Respondent has not submitted any response to support such a claim. The Respondent does not use the Disputed Doman Name in connection with a bona fide offering of goods or services. There are no rights or legitimate interests in a domain name when “[t]he website associated with the disputed domain resolves in a free parking page with uploaded third party links.” Mahindra & Mahindra Limited v. Stanley Pace, Case No. D2011-2189. Nor is the Respondent making any legitimate noncommercial or fair use of the Disputed Domain Name.
Based on the foregoing, the Panel rules that the Respondent has no rights or legitimate interests in the Mark.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith registration and use on the part of the respondent, as follows:
(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line 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.
Under the circumstances, the Respondent’s selection of the Disputed Domain Name supports the conclusion that the Respondent has acted in bad faith with respect to registration and use of the Disputed Domain Name.
WIPO 3.0, para. 3.2.2, describes the circumstances in which the Registrant knew or should have known about the prior rights of the Complainant, as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark.”
The Respondent registered the Disputed Domain Name in 2008, nearly 20 years after the Complainant first used the Mark and at least 10 years after the Complainant registered the Mark in connection with skin care products and related services. The Complainant has since that time promoted and sold these products under the Mark in various countries around the world, including via the Internet.
The most reasonable conclusion under such circumstances is that the Respondent selected the Disputed Domain Name in bad faith with full knowledge of the Complainant’s prior rights in the Mark. From among the large number of possible marks that were available to the Respondent, it chose the mark OBAGI as the formative part of the Disputed Domain Name. The Panel does not believe that the selection of the Mark as the dominant part of the Disputed Domain Name was accidental, but rather was a knowing decision made in bad faith to take advantage of the prior rights of the Complaint in the Mark.
Accordingly, the Panel rules that the Respondent acted in bad faith in the registration of the Disputed Domain Name.
With respect to the use of the Disputed Domain Name, the Complaint attaches a screenshot of a parking page, dated March 20, 2017, to which the Disputed Domain Name resolved as of that date. The page contains both a number of Sponsored Listings and Related Links, almost all of which consist or, or contain, the mark OBAGI. Such use of the Disputed Domain Name by the Respondent indicates an intention at that time to divert Internet users to its website for commercial gain by taking advantage of the Mark.
See WIPO 3.0, paragraph 2.9, which provides that use of a domain name to post parking and landing pages or PPC links is viewed, except in certain limited circumstances, as unfair use of the complainant’s mark. Numerous decisions have found bad faith based on use of the domain name in circumstances similar to those in the instant case. See, e.g., Sanofi-Aventis v. Billionaire Club, WIPO Case No. D2004-0805 (Nov. 17, 2004).
An attempt by the Panel to view the webpage to which the Disputed Domain Name resolved, at least as late as March 20, 2017, leads to the following message:
“Unable to locate the server named “obagiclear.net”—the server does not have a DNS entry. Perhaps there is a misspelling in the server name, or the server no long exists.”
The Disputed Domain Name appears to have been deactivated. This does not change the conclusion that the Respondent has acted in bad faith. See, e.g., Accor v. ADCO Build, WIPO Case No. D2015-2337.
Based on the foregoing, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith.
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 <obagiclear.net> be transferred to the Complainant.
Neil J. Wilkof
Date: June 19, 2017