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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bausch & Lomb Inc. v. Domain Protection Services, Inc. / Darnell Mckissack

Case No. D2021-3087

1. The Parties

The Complainant is Bausch & Lomb Inc., United States of America (“United States”), represented internally.

The Respondent is Domain Protection Services, Inc., United States / Darnell Mckissack, United States.

2. The Domain Name and Registrar

The disputed domain name <bauschhealthinc.com> (the “Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2021. On September 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 2021, 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 September 29, 2021.

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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for the Respondent filing a response was October 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on October 21, 2021.

The Center appointed Marylee Jenkins as the sole panelist in this matter on October 28, 2021. 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

Based on the review of the uncontested evidence submitted by the Complainant, the Panel finds that the Complainant is the owner of multiple trademark registrations for the word mark BAUSCH HEALTH in multiple jurisdictions throughout the world including, for example:

- European Union Trade Mark Registration No. 017898557 (filed on May 9, 2018; registered on December 28, 2018) in International Classes 1, 3, 5, 9, 10, 16, 21, 30, 35, 36, 37, 38, 41, 42, and 44;

- European Union Trade Mark Registration No. 017923730 (filed on June 27, 2016; registered on May 22, 2020) in International Classes 3, 5, 9, 10, 16, 41, 42, and 44;

- Chinese Trademark Registration No. 47663216 (filed on June 30, 2020; registered on July 14, 2021) in International Class 10; Chinese Trademark Registration No. 47589728 (filed on June 28, 2020; registered on April 7, 2021) in International Class 3;

- Chinese Trademark Registration No. 47589729 (filed on June 28, 2020; registered on July 14, 2021) in International Class 5;

- Chinese Trademark Registration No. 47589732 (filed on June 28, 2020; registered on April 7, 2021) in International Class 16; and

- Chinese Trademark Registration No. 47589733 (filed on June 28, 2020; registered on April 7, 2021) in International Class 41 (individually and collectively referred to as the “Complainant’s Mark”).

The Complainant also owns the domain name <bauschhealth.com> where the Complainant provides a web site offering its products and services to consumers.

The Domain Name <bauschhealthinc.com> was registered on August 1, 2021 and redirects to the Complainant’s website at “www.bauschhealth.com”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it manufactures various pharmaceutical products and medical devices in over 90 countries, including the United States, Canada, Europe, and China. The Complainant states that its products are used by approximately 150 million people around the world. The Complainant further maintains an Internet presence through its primary website at the domain name <bauschhealth.com>.

The Complainant states that it owns and has obtained numerous trademark registrations for the Complainant’s Mark, including those cited above, and that none of these registrations have been abandoned, cancelled, or revoked. Based on its extensive use and its trademark registrations, the Complainant alleges that it owns the exclusive right to use the Complainant’s Mark.

The Complainant alleges that the Domain Name is confusingly similar to the Complainant’s Mark as it incorporates the Complainant’s Mark completely. The Complainant then alleges that the Respondent has added the descriptive phrase “inc” to the Complainant’s Mark, which is a type of company, and only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant’s Mark. The Complainant further alleges that the Respondent redirects the Domain Name to the website owned by the Complainant “www.bauschhealth.com”, which is additional evidence that the Domain Name is confusingly similar to the Complainant’s Mark.

The Complainant alleges that the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests in the Domain Name. Additionally, the Complainant notes that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s Mark. Rather the Complainant notes that the Respondent is using the Domain Name to redirect Internet users to the Complainant’s own website in order to legitimize it. Further, the Complainant states that the Respondent has used the Domain Name in emails from the Respondent that seek to fraudulently obtain goods or products from companies. The Complainant therefore alleges that the Respondent is not using the Domain Name to provide a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, as allowed under the Policy.

The Complainant further alleges that the Respondent registered the Domain Name after: (i) the Complainant filed for registrations of the Complainant’s Mark in China and the European Union; (ii) the Complainant’s Mark gained worldwide consumer recognition; and (iii) the Complainant’s first use of its <bauschhealth.com> domain name.

The Complainant further alleges that at the time of the registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s Mark and that the registration of domain names containing well-known trademarks constitutes bad faith per se. The Complainant further alleges that the Respondent sent emails to various companies, posing as an employee of the Complainant and with the Domain Name in such emails, in order to fraudulently order goods from these companies who then sent invoices to the Complainant. The Complainant further alleges that the Respondent created a likelihood of confusion with the Complainant and the Complainant’s Mark by registering the Domain Name that incorporates the Complainant’s Mark in its entirety and a closely related phrase, which demonstrates that the Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and website. By creating this likelihood of confusion between the Complainant’s Mark and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Complainant alleges that the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s Mark in order to increase traffic to the Domain Name’s website for the Respondent’s own pecuniary gain.

The Complainant additionally alleges that it contacted the Respondent through a cease and desist letter regarding the unauthorized use of the Complainant’s Mark in the Domain Name and never received a response from the Respondent. The Complainant further alleges that the Respondent continued to send out fraudulent emails after the Complainant sent the Respondent the cease and desist letter. Based on the above, the Complainant alleges that it is more likely than not that the Respondent knew of and targeted the Complainant’s Mark and that the Respondent should be found to have registered and used the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name registrant is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the 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.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to the Complainant’s Mark.

A review of the second-level domain (“bauschhealthinc”) of the Domain Name shows that the Domain Name comprises the Complainant’s Mark BAUSCH HEALTH in its entirety and the abbreviation of the word “incorporation” (i.e. “inc”) as a suffix. With the dominant portion of the Domain Name being the Complainant’s distinctive trademark BAUSCH HEALTH, the addition of the suffix “inc” in the Domain Name does not avoid a finding of confusingly similarity for the purposes of the Policy. Rather, such inclusion along with the evidence of the Complainant’s own web site at the domain name <bauschhealth.com> shows that the Respondent was clearly aware of the Complainant’s Mark and its website when registering the Domain Name.

Accordingly, based on the uncontested evidence submitted by the Complainant, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s Mark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

There is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed, or authorized the Respondent to register or use the Complainant’s Mark in any manner. In addition, no evidence has been presented that before notice to the Respondent of the dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the Domain Name, as an individual, business or otherwise. Rather the uncontested evidence clearly shows that the Complainant had well-established rights to the Complainant’s Mark in multiple jurisdictions that predate the Respondent’s registration of the Domain Name. In addition, the Complainant has presented sufficient evidence to result in a finding that the Respondent is misleadingly diverting consumers to the Complainant’s own website in an apparent attempt to fraudulently order products from companies while posing as the Complainant with the Domain Name. Furthermore, such use of the Domain Name by the Respondent is clearly not legitimate noncommercial or fair use of the Domain Name.

The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Based upon the undisputed evidence submitted by the Complainant, the Panel finds that the Respondent clearly had actual knowledge of the Complainant’s Mark when registering the Domain Name. This finding is supported by the uncontested evidence showing that the registration of the Domain Name by the Respondent in no way predates the Complainant’s substantially earlier registrations of the Complainant’s Mark. Along with the evidence of the Complainant’s website at the domain name <bauschhealth.com>, the Complainant has more than sufficiently shown that the Respondent registered the Domain Name in bad faith for the purpose of redirecting the Domain Name to the Complainant’s website so as to send fraudulent emails to unsuspecting third parties. As the uncontested evidence also shows, the Respondent was not making any legitimate noncommercial or fair use of the Domain Name and clearly had knowledge of the Complainant, the Complainant’s Mark, and its website based on the redirection of the Domain Name and the use of fraudulent emails. The Respondent’s failure to provide accurate contact information in the registration for the Domain Name only further supports a finding of the Respondent’s bad faith domain name registration and use.

The Panel concludes that the Respondent registered and is using the Domain Name to attempt to fraudulently order products from third party companies by redirecting the Domain Name and sending fraudulent emails in order to attempt to legitimize the source and create a likelihood of confusion with the Complainant’s Mark and its website as to the source, sponsorship, affiliation or endorsement thereof. The Panel further finds that the Respondent registered and is using the Domain Name to create initial interest confusion among Internet users as to the source, sponsorship, affiliation or endorsement thereof for its own commercial gain. The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <bauschhealthinc.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: December 1, 2021

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