WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Obagi Medical Products, Inc., AKA OMP, Inc. v. Greg Richburg
Case No. D2017-1417
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 Greg Richburg of Fresno, California, United States.
2. The Domain Name and Registrar
The disputed domain name <obagiskincare.net> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 21, 2017. On July 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on July 25, 2017 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 26, 2017.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on July 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2017.
The Center appointed Steven Auvil as the sole panelist in this matter on August 25, 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 has used the mark OBAGI in various forms since at least as early as July 18, 1989. The 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.
The Complainant owns a United States federal registration covering its OBAGI mark, United States Registration No. 2,203,028, which was registered 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 the Complainant's ownership of the mark, and of the Complainant's exclusive right to use the mark in connection with the identified services. The Complainant also owns numerous other United States registrations for its OBAGI marks, as set forth below:
- OBAGI, Registration No. 2,838,565, registered on May 4, 2004;
- OBAGI, Registration No. 2,786,594, registered on November 25, 2003;
- OBAGI and Design, Registration No. 2,450,253, registered on May 8, 2001;
- OBAGI BLUE PEEL, Registration No. 2,155,170, registered on May 5, 1998;
- OBAGI CLENZIDERM, Registration No. 3,410,886, registered on April 8, 2008;
- OBAGI ELASTIDERM, Registration No. 3,568,040, registered on January 27, 2009;
- OBAGI FOR LIFE, Registration No. 3,949,060, registered on April 19, 2011;
- OBAGI HYDRATE, Registration No. 4,456,046, registered on December 24, 2013;
- OBAGI HYDRATE LUXE, Registration No. 4,914,115, registered on March 8, 2016;
- OBAGI MEDICAL and Design, Registration No. 4,390,981, registered on August 27, 2013;
- OBAGI NU-DERM, Registration No. 2,155,067, registered on May 5, 1998;
- OBAGI NU-DERM, Registration No. 3,813,278, registered on July 6, 2010;
- OBAGI SKIN HEALTH INSTITUTE, Registration No. 4,625,205, registered on October 21, 2014;
- OBAGI SYSTEM and Design, Registration No. 4,328,443, registered on April 30, 2013;
- OBAGI-C, Registration No. 2,955,085, registered on May 24, 2005;
- OBAGI360, Registration No. 5,059,802, registered on October 11, 2016;
- OTHERS PROMISE. OBAGI DELIVERS., Registration No. 4,161,388, registered on June 19, 2012; and
- OBAGI PREMIER POINTS, Registration No. 5,023,962, registered on August 16, 2016.
The Complainant is also the owner of the domain name <obagi.com>, which it uses in connection with a website that promotes its products and services.
The disputed domain name, <obagiskincare.net> (the "Disputed Domain Name"), was registered on July 30, 2006. The Disputed Domain Name resolved to a website selling the Complainant's products.
5. Parties' Contentions
According to the Complainant, the Disputed Domain Name <obagiskincare.com> is confusingly similar to the registered OBAGI marks, lacking features that would distinguish it from the marks. The Complainant argues that the addition of the terms "skin care" and the generic Top-Level Domain ("gTLD") ".net" fail to differentiate the Disputed Domain Name from the Complainant's marks.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name, as the Respondent is not commonly known by any part of the Disputed Domain Name and the Complainant has not authorized the Respondent to use its marks.
The Complainant also argues that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, nor is it making a bona fide offering of goods or services. In support of this argument, Complainant pleads that the website associated with the Disputed Domain Name does not disclose that it is not affiliated with the Complainant and that Respondent's offer of Obagi products is in contravention of the law.
Finally, the Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith, evidenced by the Respondent's actual knowledge of the Complainant's trademark rights and the use of the Disputed Domain Name to make unauthorized and illicit sales of OBAGI products.
The Respondent did not respond to the Complainant's contentions.
6. Discussion and Findings
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.
Because the Respondent failed to respond to the Complaint, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
A. Identical or Confusingly Similar
Based on its trademark registrations, the Panel finds that the Complainant has rights in the OBAGI marks.
Moreover, the Panel finds that the Disputed Domain Name is confusingly similar to the OBAGI marks because it incorporates the mark OBAGI in its entirety and the addition of the descriptive term "skin care" and the gTLD ".net" are not sufficient to dispel the confusing similarity with the Complainant's mark. The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314, WIPO Case No. D2016-1671 ("Adding a generic term is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the disputed domain name as being connected to the Complainant's trademark."); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1 ("The 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 Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second proof requirement is that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel finds that this proof requirement is satisfied here.
First, there is no evidence that the Respondent is commonly known by the Disputed Domain Name, or any portion thereof. The Complainant has not assigned, sold, or transferred any rights in its OBAGI marks or granted the Respondent permission to use them. At the time that the Complaint was filed, the Complainant attached evidence that the Respondent was using the website at the Disputed Domain Name to sell the Complainant's products without its authorization.
Second, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, or that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services.
According to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the use of a domain name reflecting a trademark for a website that promotes an offering of the genuine product marketed under the trademark can be regarded as a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the UDRP, provided the following, cumulative conditions are met: first, that the user of the domain name is actually offering the genuine products marketed under the trademark; second, that he uses the website identified by the domain name to promote only those products; third, that the website accurately and sufficiently clearly indicates the user's relationship (or lack of relationship) with the owner of the trademark; and, fourth, that the user has not sought to register all domain names which reflect the trademark. There is no evidence in the record from which to conclude that these criteria are satisfied in this dispute. Accordingly, the Panel concludes that the Disputed Domain Name is not being used in connection with a bona fide offering of goods or services.
For these reasons, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that the Complainant demonstrates that the Respondent registered and is using the Disputed Domain Name in bad faith. WIPO Overview 3.0, section 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 the Respondent registered the Disputed Domain Name in bad faith when it targeted the Complainant's distinctive OBAGI marks – the Disputed Domain Name includes the mark in its entirety along with the descriptive term "skin care," which serves to emphasize that the content of the Respondent's website focuses on the Complainant's products.
In addition, the Respondent has used the Disputed Domain Name in bad faith. While the current website at the Disputed Domain Name is suspended, the Complainant provided evidence that, at the time the Complaint was filed, the sole purpose of the website at the Disputed Domain Name was the promotion and unauthorized sale of the "Obagi" branded products. See TP-Link International Limited v. Gurdeep Pal Singh, WIPO Case No. D2017-0884 (The Panel found bad faith and transferred domain name where the Respondent "deliberately used the Complainant's trademark to perpetrate some type of fraud" inciting "the potential to damage the Complainant's business"). Previous UDRP Panels have found that using a disputed domain name without authorization to offer even genuine products bearing the mark of the complainant constitutes bad faith. NEUF v. Team, WIPO Case No. D2013-1384 (finding bad faith when the disputed domain name hosted websites that offered for sale allegedly genuine products, whether those products were genuine or non-genuine). The Panel finds this authority persuasive and supports a finding that the Respondent has used the Disputed Domain Name in bad faith.
Accordingly, the Complainant has satisfied paragraph 4(a)(iii) 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 <obagiskincare.net> be transferred to the Complainant.
Date: September 8, 2017