WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Obagi Medical Products, Inc., AKA OMP Inc. v. NA NA, La Sangria Ltd,
Case No. D2017-1003
1. The Parties
Complainant is Obagi Medical Products, Inc., AKA OMP Inc. of Irvine, California, United States of America ("U.S."), represented by Wood, Herron & Evans, LLP, U.S.
Respondent is NA NA, La Sangria Ltd, U.S.
2. The Domain Name and Registrar
The disputed domain name <obagi-shop.info> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2017. On May 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 23, 2017, 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 May 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 19, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 22, 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 has used the trademark OBAGI since as early as July 18, 1989. Variants on the basic OBAGI mark include the following: OBAGI (and design), OBAGI BLUE PEEL, OBAGI CLENZIDERM, OBAGI ELASTIDERM, OBAGI FOR LIFE, OBAGI HYDRATE, OBAGI HYDRATE LUXE, OBAGI MEDICAL (and design), OBAGI NU-DERM, OBAGI SKIN HEALTH INSTITUTE, OBAGI SYSTEM (and design), OBAGI-C, OBAGI360, OTHERS PROMISE. OBAGI DELIVERS, and OBAGI PREMIER POINTS.
Complainant's OBAGI marks have been used in connection with a variety of skin care products and services, including skin cream, cleansing 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. Complainant has used its OBAGI marks in various formats in connection with goods and services related to skin care since 1989.
Complainant owns a United States federal registration covering its OBAGI mark, U.S. Registration No. 2,203,028, which issued on November 10, 1998, for skin care products, namely, skin creams, clarifiers, sun block, lotion, cleansing cream and lotion, lighteners, toners and moisturizers. This registration serves as prima facie evidence of the validity of the mark, of Complainant's ownership of the mark, and of Complainant's exclusive right to use the mark in connection with the identified services. Complainant also owns numerous other U.S. registrations for its OBAGI marks, as set forth below:
- OBAGI, Registration No. 2,838,565, issued May 4, 2004;
- OBAGI, Registration No. 2,786,594, issued November 25, 2003;
- OBAGI (and design), Registration No. 2,450,253, issued May 8, 2001;
- OBAGI BLUE PEEL, Registration No. 2,155,170, issued May 5, 1998;
- OBAGI CLENZIDERM, Registration No. 3,410,886, issued April 8, 2008;
- OBAGI ELASTIDERM, Registration No. 3,568,040, issued January 27, 2009;
- OBAGI FOR LIFE, Registration No. 3,949,060, issued April 19, 2011;
- OBAGI HYDRATE, Registration No. 4,456,046, issued December 24, 2013;
- OBAGI HYDRATE LUXE, Registration No. 4,914,115, issued March 8, 2016;
- OBAGI MEDICAL (and design), Registration No. 4,390,981, issued August 27, 2013;
- OBAGI NU-DERM, Registration No. 2,155,067, issued May 5, 1998;
- OBAGI NU-DERM, Registration No. 3,813,278, issued July 6, 2010;
- OBAGI SKIN HEALTH INSTITUTE, Registration No. 4,625,205, issued October 21, 2014;
- OBAGI SYSTEM (and design), Registration No. 4,328,443, issued April 30, 2013;
- OBAGI-C, Registration No. 2,955,085, issued May 24, 2005;
- OBAGI360, Registration No. 5,059,802, issued October 11, 2016;
- OTHERS PROMISE. OBAGI DELIVERS., Registration No. 4,161,388, issued June 19, 2012; and
- OBAGI PREMIER POINTS, Registration No. 5,023,962, issued August 16, 2016.
Complainant owns the domain name <obagi.com>, which it uses for its website to promote its products and services.
The Domain Name was registered on November 17, 2011.
5. Parties' Contentions
(i) Identical or confusingly similar: Complainant contends that the Domain Name is confusingly similar to Complainant's registered OBAGI trademark, as well as to many of its other OBAGI marks. The Domain Name differs only in two aspects: first, by the addition of a hyphen along with the term "shop," and second, by the addition of the generic Top-Level Domain ("gTLD") ".info." Complainant states these differences are insufficient to differentiate the Domain Name from Complainant's mark.
The added presence of the hyphen along with the term "shop" does not distinguish the Domain Name from Complainant's marks. The first textual component of the Domain Name is identical to Complainant's registered mark. Complainant states that prior UDRP panelists have noted that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant's mark, and the addition of other terms in the domain name does not affect this finding. Further, the presence of the hyphen is of no legal significance – such characters are necessary to replace spaces in a domain name, which can have no spaces between terms. Complainant asserts that the combination of the term "shop" along with Complainant's OBAGI mark serves only to increase the potential for confusion.
Moreover, the addition of the ".info" gTLD is a minor difference mandated by domain name conventions; it is insufficient to distinguish the Domain Name from Complainant's registered OBAGI mark.
Complainant thus argues that Respondent's Domain Name is sufficiently similar to Complainant's OBAGI marks that a reasonable Internet user would assume that both the Domain Name and any associated website are somehow affiliated with Complainant. This situation establishes a clear case of confusion. In light of the foregoing, the Domain Name is confusingly similar to Complainant's OBAGI marks.
(ii) Rights or legitimate interests: Complainant states that it is clear Respondent lacks rights or legitimate interests in the Domain Name when several facts are considered. Complainant has never assigned, sold or transferred any rights in its OBAGI marks to Respondent, nor has Complainant granted Respondent permission to use or register its mark as a domain name. Respondent is not commonly known by the Domain Name, nor is there any indication that Respondent registered it as a trademark. Complainant states the defense that a domain name is a name commonly used to identify a respondent has been construed narrowly to apply only to those circumstances where a respondent can show that it was commonly known by the name prior to registering the corresponding domain name. In this case, Respondent's Domain Name registration was not issued in the name "Obagi-Shop," but instead in the name "La Sangria Ltd." The use of the "La Sangria Ltd." name in the registration record suggests that Respondent was commonly known by that name, and not as "Obagi-Shop," prior to registering the Domain Name.
Complainant further submits that Respondent is not making a legitimate noncommercial or fair use of the Domain Name, nor is Respondent using it in connection with a bona fide offering of goods or services. The Domain Name resolves to a webpage with the terms "OBAGI-shop" at the top next to a gold cross symbol, and below that, in large type, a banner reading "Welcome to OBAGI-SHOP." The site includes several photographs of Complainant's products, along with textual descriptions that comprise links to additional pages on the site where the goods can be purchased. The sale of Obagi products through this site — which is a commercial endeavor — is not authorized by Complainant, who maintains very strict standards regarding distribution of its products.
Many of Complainant's products are to be sold only via prescription or to be used under a medical professional's care. The following products, which are advertised on and purportedly sold through the website linked to the Domain Name, are all Obagi products (or appear to be analogues thereof) that are only available with a valid prescription: Obagi Nu-Derm Clear; Obagi Nu-Derm Blender; Obagi Nu-Derm Sunfader; Obagi Nu-Derm Transformation Kits for both normal-to-oily skin and normal-to-dry skin (which include at least some of the products listed above); Obagi-C Rx Clarifying Serum for both for both normal-to-oily skin and normal-to-dry skin; Obagi-C Rx Therapy Night Cream; Obagi-C Rx System sets for both normal-to-oily skin and normal-to-dry skin (which include at least some of the products listed above); and Obagi Tretinoin. Complainant asserts that the website linked to the Domain Name appears to make no attempt to verify that these products are being sold subject to a valid prescription, nor does the site appear to make any effort to take steps to ensure that all legal requirements are complied with in the sale and distribution of the goods. As such, the offering of these products for sale — even if they are otherwise the same as Complainant's other goods — cannot be considered legitimate, as it is not legal to sell these products without restriction online. Moreover, state law in Massachusetts, Montana, New Hampshire, New York and Texas imposes certain additional restrictions on the sale of these products because they contain prescription ingredients. By offering these goods for online retail sale outside of the specific safeguards and conditions of sale set by Complainant, Respondent is making unauthorized use of Complainant's mark and selling what may be, at best, described as unauthorized gray market goods, and what may be, at least in some instances, characterized as illegal sales. Complainant thus contends that any sales or distribution of these products in contravention of these restrictions would be unlawful and therefore incapable of giving rise to any rights or legitimate interests in the Domain Name
Moreover, Complainant states there is some doubt as to whether all of the products sold through the Domain Name's website are legitimate Obagi products as produced by Complainant. The Nu-Derm System and Obagi-C Rx System sets sold by Complainant are packaged in a special box. The corresponding products offered for sale on the Domain Name's website are identified as having "no box." It is questionable, therefore, whether these products are the same as those sold by Complainant, or whether Respondent has simply cobbled together different products and is promoting them as being the same thing as the box sets sold by Complainant. Further, the sale of the component products, even if all the components of the transformation kit and/or system set are sold to the consumer, may omit the normal packaging and product inserts that normally accompany these items. As such, the products being sold with "no box" no longer constitute authentic OBAGI products.
Complainant states that Respondent does not fall within the narrow exception first recognized in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. According to that decision, a reseller may be found to be making a bona fide offering of goods if certain criteria are met. Among those criteria, the website must accurately disclose the respondent's relationship with the trademark owner. This disclosure must be both accurate and prominent. The website associated with the Domain Name makes no such disclosure. Even in the "About Us" section of the site, it does not disclose that Respondent is not affiliated with Complainant, instead making such boasts as "Obagi-shop is an online source for Obagi Medical products."
For the foregoing reasons, Complainant submits that Respondent has no rights or legitimate interests in the Domain Name.
(iii) Registered and used in bad faith: Complainant contends that Respondent has registered and used the Domain Name in bad faith. Complainant claims Respondent almost certainly had actual knowledge of Complainant's rights in the OBAGI marks at the time it registered the Domain Name, which is evidence of bad faith. Respondent is using the Domain Name in an attempt to create confusion with Complainant's OBAGI mark and domain name, and thereby attract Internet users to Respondent's website for its own commercial gain and/or to disrupt the business of Complainant. Respondent's sales, even if they do constitute genuine OBAGI products, include sales of products available only with a prescription and which may not be sold in certain locations due to state laws, yet there is no indication that Respondent is complying with the law in connection with the sale of these products. Further, Respondent has provided incomplete and inaccurate contact information for the Domain Name's registration. Complainant argues that these circumstances, taken together with the fact that Respondent has no legitimate interests in the Domain Name, combine to demonstrate that Respondent has acted in bad faith.
Complainant states Respondent almost certainly had actual knowledge of Complainant's rights in its OBAGI marks prior to registering the Domain Name. Complainant has offered its skin care products and services under the OBAGI mark for over 25 years. Complainant has long used its mark on the Internet to advertise and promote its business. Anyone with an interest in the term "obagi" would have come across Complainant's mark — and thus had actual knowledge of Complainant's rights — through a routine Internet search in 2011, when the Domain Name was registered. It is reasonable to presume that Respondent would have conducted such a search prior to registering the Domain Name, and UDRP panelists have presumed that respondents have actual knowledge of another's rights based on the presumption that such a search would be undertaken. Moreover, Respondent's knowledge of Complainant's trademark rights can be inferred from the fact that Respondent's entire reason for using the Domain Name appears to be unfairly trading on the OBAGI marks and making unauthorized and illicit sales of Obagi products. In sum, the registration of a domain name that is confusingly similar to another's registered mark that is done with actual knowledge of those rights has been found to evidence bad faith.
Complainant also contends that Respondent's registration and use of the Domain Name evidences a bad faith attempt to create confusion and/or to disrupt Complainant's business. Given the similarity between Complainant's OBAGI marks and Respondent's Domain Name, there is a clear likelihood of confusion arising from the use of the Domain Name. As a result of this confusion, Respondent hopes to attract Internet users to its website for its own commercial gain, as well as to disrupt the business of Complainant. Complainant states the likelihood of confusion is exacerbated by the content of the original website, which contains product listings for what appear to be Complainant's products. The initial impression created by the site is one of an authorized seller or reseller of Complainant's goods. As such, consumers who encounter that Domain Name are likely to believe that the associated website is one affiliated with Complainant's business. Moreover, as Respondent's site is a commercial site, Respondent has undoubtedly set up the site to make money by selling the alleged OBAGI products advertised. Complainant thus argues that Respondent's registration and use of the Domain Name appear calculated to cash in on the potential for confusion, and Respondent's actions have been undertaken in bad faith.
Further, Complainant alleges that Respondent's sale of certain products appears to be in violation of the law. Respondent is apparently offering prescription products for sale without any requirement for a prescription, and is apparently not taking any steps to ensure that all legal requirements for the sale of these goods are complied with.
Finally, Complainant contends that Respondent's failure to provide accurate contact information is evidence of bad faith. Respondent has not provided complete contact information as part of the Domain Name registration record. Paragraph 4.a.i. of the Domain Name Registration Agreement applicable to the Domain Name requires that the registrant provide "current, complete and accurate information" regarding its name, postal address, and telephone number, and that it keep this information up to date. As evident from the WhoIs record associated with the Domain Name, Respondent has not provided complete and accurate information. It has failed to provide any sort of postal address, and has provided both a false postal code (postal codes in the United States have 5 digits, and the one supplied by Respondent has only 4) and a false telephone number (the number +1-1111111111 is not a valid telephone number in the United States). Failure to provide and maintain accurate contact information has been found to evidence bad faith.
For the foregoing reasons, Complainant submits that Respondent registered and is using the Domain Name in bad faith.
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. Paragraph 15(a) of the Rules provides that the Panel will decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain a decision (as it has requested) that the Domain Name be transferred to it:
(i) The Domain Name registered 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 with respect to 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 determines that Complainant has strong rights in its distinctive OBAGI trademark, based on the evidence of Complainant's numerous trademark registrations, as well as the use and promotion of the OBAGI mark for over 25 years since 1989.
The Panel also determines that the Domain Name is confusingly similar to Complainant's OBAGI trademark. As stated by paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "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." Regarding the combination in the Domain Name of Complainant's OBAGI mark with the term "shop" (separated by a hyphen), paragraph 1.8 of the WIPO Overview 3.0 provides further guidance: "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element." See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 ("The Panel finds that considering both Parties offering similar online retail products, the additional word "shop" does not negate the confusing similarity between the domain name and the Complainant's trademarks. On the contrary, it does suggest that it is related to the Complainant's website… which is likely to cause consumers' confusion.").
The Panel also finds that the gTLD ".info" in which the Domain Name is registered is irrelevant to the analysis of confusing similarity. As stated by paragraph 1.11.1 of the WIPO Overview 3.0, "[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."
Accordingly, the Domain Name is confusingly similar to a trademark in which Complainant has rights, and Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
As to the second element of the Policy, WIPO Overview 3.0, paragraph 2.1, states that "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests with respect to the Domain Name, while Respondent has failed to submit a Response.
As submitted by Complainant, Respondent is not commonly known by the Domain Name, Complainant has not transferred any rights in its OBAGI mark to Respondent, and Complainant has not granted Respondent permission to use its OBAGI mark in a domain name.
Moreover, the Panel finds that Respondent is not making a legitimate noncommercial or fair use of the Domain Name, nor is Respondent using it in connection with a bona fide offering of goods or services. Respondent is trading on Complainant's goodwill by using the Domain Name to offer and apparently sell prescription products without a license or authorization from Complainant. As noted above, the Domain Name resolves to a website with the terms "OBAGI-shop" at the top and a banner reading "Welcome to OBAGI-SHOP." The site includes several photos of Complainant's products, along with descriptions that include links to webpages where the goods can apparently be purchased. Many of Complainant's products are to be sold only with a prescription and/or used under a medical professional's care. Respondent's offering of these products without safeguards would appear to be in contravention of the law, at least in certain states in the U.S. Moreover, Respondent's website does not include any disclosure or disclaimer concerning Respondent's relationship (or lack thereof) with Complainant. This activity does not represent a bona fide offering of goods or service under the Policy. See, e.g., Roche Products Inc. and Genentech, Inc. v. Vincent Holman and WhoIs Privacy Services Pty., WIPO Case No. D2010-1951 (explaining that a respondent cannot be found to be making a bona fide offering of goods when the sale of such goods is illegal); Searle & Co., G.D. Searle LLC v. Office Graphic Design, Domains Department, WIPO Case No. D2011-0512 (noting that "a number of UDRP panels have held that a registrant has no right or legitimate interest in using a domain name to sell the trademark owner's prescription drug product without a prescription").
Accordingly, Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, paragraph 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark."
Here, the Panel finds that there is clear evidence that Respondent registered the Domain Name in bad faith when it targeted Complainant's distinctive OBAGI trademark — the Domain Name includes the mark in its entirety along with the descriptive term "shop," which serves to emphasize that the content of Respondent's website focuses on Complainant's products.
Further, the Domain Name has been used to take unfair advantage of Complainant's mark. As described above, the Domain Name is linked to a website which purports to offer OBAGI branded products for sale, with content that might suggest Respondent is an authorized distributor; however, there is no disclaimer concerning Respondent's lack of relationship with Complainant. Respondent is thus using the Domain Name in an attempt to create confusion with Complainant's OBAGI mark, and thereby attract Internet users to Respondent's website for its own commercial gain and/or to disrupt the business of Complainant. See PEI Licensing, Inc. v. Registration Private, Domains By Proxy, LLC / Robert Bartlett, WIPO Case No. D2016-0987 (noting that, where "the content of the website appears designed to reinforce the Internet user's impressions that the disputed domain name belongs to Complainant … [t]he resulting confusion is grounds for a finding of bad faith use"). Moreover, Respondent's sales, even if they do constitute genuine OBAGI products, include sales of products that should be sold only with a prescription and thus cannot be sold freely in certain locations due to state laws, yet there is no indication that Respondent is complying with the law when offering the sale of these products. See Autodesk, Inc. v. Xiaodong Wang, WIPO Case No. D2014-1690 ("[p]anels have routinely found that a registrant's use of a domain name for per se illegal activities constitutes bad faith registration and use"). Finally, Respondent has also failed to provide accurate contact information in its registration details for the Domain Name. See, e.g., Banco Original do Agronegócio S.A. v. Private Registration, WIPO Case No. D2013-2037 (noting that "providing false or inaccurate contact information when registering a domain name can be evidence of bad faith registration and use"); see also Association Robert Mazars v. INTEG Kumaran, WIPO Case No. D2009-1679 (explaining that "[p]roviding false or inaccurate contact information when registering a domain name can be evidence of bad faith registration and use"). All of these circumstances point to Respondent's bad faith in the registration and use of the Domain Name.
Accordingly, the Panel determines that Complainant has satisfied 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 Domain Name, <obagi-shop.info>, be transferred to Complainant.
Christopher S. Gibson
Date: July 8, 2017