WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brand Development Corp. v. Zora Hajali
Case No. D2017-0756
1. The Parties
Complainant is Brand Development Corp. of Miami, Florida, United States of America (“United States”), represented by Heidi Howard Tandy, United States.
Respondent is Zora Hajali of Wilmington, Delaware, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain names <dermarose.com>, <dermarose.info>, <dermarose.net>, <dermarose.org> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2017. On April 18, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On April 19, 2017, the Registrar transmitted by e-mail 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 May 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2017. Respondent requested an extension to submit its Response on May 21, 2017 and on June 5, 2017. The due date for Response was June 12, 2017. The Response was filed with the Center on June 12, 2017. Moreover, a submission filed by Respondent was received by e-mail on June 14, 2017. Respondent sent also an e-mail communication to the Center on June 16, 2017 and another submission on June 24, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 16, 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.
The Panel, in its discretion, considered Respondent’s submission of June 14, 2017 and Respondent’s email communication of June 16, 2017, as these submissions were only slightly out of time. The Panel did not consider Respondent’s June 24, 2017 unsolicited supplemental submission because it was submitted far too late.
4. Factual Background
Complainant holds a registered trademark for DERMAROSE in connection with various skin-care products. The United States Patent and Trademark Office (“USPTO”) issued the registration on April 15, 2014, and Complainant’s first use of the DERMAROSE mark was in 2012.
Respondent registered each of the four Domain Names on December 22, 2011. The Domain Names resolve to a parking page set up by the Registrar. Respondent denies having had any knowledge of Complainant or its DERMAROSE trademark at the time the Domain Names were registered.
5. Parties’ Contentions
Complainant’s main assertion appears to be is that Respondent is making no legitimate use of the Domain Names and hence Respondent’s rights in the Domain Names must yield to Complainant’s registered trademark. Complainant also asserts that there are “circumstances indicating” that Respondent registered the Domain Names primarily to sell them for profit to “the owner of the trademark or service mark or to a competitor of that Complainant.”
Respondent’s main point is that bad faith cannot exist where Respondent registered the Domain Names before Complainant had acquired any trademark registration and, indeed, before Complainant had made any use of the DERMAROSE mark. Respondent also denies having ever heard of Complainant or its mark at the time the Domain Names were registered.
Respondent makes other assertions about the Domain Names, but they are not necessary for the disposition of this dispute.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark DERMAROSE through USPTO registration. The Panel further concludes that each of the Domain Names is identical to this mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
With respect to each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
In view of the Panel’s conclusion below in connection with the “bad faith” element of the Policy, no discussion of the “rights or legitimate interests” issue is required.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides, with respect to each of the Domain Names, that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the Domain Names were not registered in bad faith. Respondent registered the Domain Names more than two years before Complainant secured a registration of the DERMAROSE trademark, and at least several weeks before Complainant first used the mark in commerce. (The Panel also observes that, while Complainant alleges that it first used the DERMAROSE mark in 2012, the trademark registration indicates a February 12, 2013 first-use date.) Respondent denies any knowledge of Complainant or its DERMAROSE mark at the time the Domain Names were registered, and that denial is plausible based on the record before the Panel. Accordingly, the conclusion is inescapable that the Domain Names were not registered in bad faith. It follows that this Complaint fails.
The Panel also notes that Complainant asserted, with absolutely no factual support, that there are “circumstances indicating” that Respondent’s chief motivation in registering the Domain Names was to sell them to “the owner of the trademark or service mark or to a competitor of that Complainant.” This baseless allegation, coupled with the impossibility of this Complaint succeeding for the reason set forth above, would supply valid grounds for a finding of Reverse Domain Name Hijacking (“RDNH”) against Complainant. Although Respondent did not request an RDNH finding, the Panel makes one.
For the foregoing reasons, the Complaint is denied. The Panel further declares that this Complaint was brought in bad faith and constitutes Reverse Domain Name Hijacking.
Robert A. Badgley
Date: June 28, 2017