WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.S. WATSONS TM LIMITED v. David J. Perkins, Worldwide Domains
Case No. DPH2018-0004
1. The Parties
The Complainant is A.S. WATSONS TM LIMITED of Road Town, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, represented by Quisumbing Torres Law Firm, Philippines.
The Respondent is David J. Perkins, Worldwide Domains of Connord, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <watsons.ph> is registered with DotPH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2018. On September 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2018, 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 and contact information for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2018. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 6, 2018.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on November 19, 2018. 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 was established in Hong Kong, China in 1841 and is nowadays one the world’s largest international health and beauty retailers. It is operating more than 6,000 stores and over 1,500 pharmacies worldwide.
The Complainant and affiliated entities are the registered owners of the following trademarks, amongst others:
Date of registration
April 2, 2015
Hong Kong, China
March 1, 2014
European Union (EUIPO)
January 5, 2004
The disputed domain name was registered on September 15, 2017. The disputed domain name resolves to a PPC site which also offers at the top of the page a link to sell the disputed domain name.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Complainant commenced its operations in the Philippines in 2002 when it opened its first retail stores in the Philippines. As of December 2017, the Complainant operates approximately 623 retail stores throughout the Philippines. The Complainant also offers online shopping services to its Philippine-based consumers through “www.watsons.com.ph”.
The Complainant is the owner of a number of registered trademarks in relation to WATSONS in different jurisdictions. The disputed domain name is identical to the disputed domain name.
The Complainant has not authorized the Respondent to use the WATSONS trademark or cause registration of the disputed domain name, neither is the Respondent known by the disputed domain name. Further, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent of profit.
The Complainant alleges that the disputed domain name incorporates the entire WATSONS trademark in the corresponding domain name. Having the WATSONS mark a well-known reputation, the registration of the disputed domain name took place in an attempt for commercial gain.
The Complainant also provides screenshots of the website to which the disputed domain name resolves. Here arises an offer for sale with a link that forwards to a website with instructions on how to purchase the disputed domain name. Hence, the Respondent is using the disputed domain name solely for the purpose of selling it presumably to the lawful owner of the WATSONS trademark or to its business competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the WATSONS trademark based on its trademarks registrations in various jurisdictions, including in the Philippines.
It is clear that the disputed domain name reproduces in its entirety the WATSONS trademark. Besides, it is well established that country code Top-Level Domains (“ccTLDs”), here “.ph” (for the Philippines), are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
The Panel, therefore, concludes that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant argues that the Respondent has no rights or legitimate interests based on the following: the Complainant has not authorized the Respondent to register or use the disputed domain name; the Respondent is not commonly known by the disputed domain name and the Respondent has made no legitimate commercial or noncommercial use of the disputed domain name since the goal appears to be to sell it through the Internet to the Complainant or its competitors.
Consequently, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. However, the Respondent did not offer any rebuttal.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
As set out above, the WATSONS trademark is to be considered well-known for the purposes of the Policy. Being this way, it is more likely than not that the Respondent knew about the Complainant’s trademark. In the Panel’s view such knowledge is heightened by the consequent use of the disputed domain name after registration. The Panel notes that the Respondent is offering the disputed domain name for sale and has included PPC links on the website connected to the disputed domain name.
With regard to the use of the disputed domain name, the Panel notes that there is no evidence that the Respondent had approached the Complainant or one of its competitors; rather, the Respondent offered the disputed domain name for sale to the general public. However, there is an attempt to sell the disputed domain name as a commodity while the Respondent had no rights or legitimate interest in the disputed domain name. The Panel also notes that it is more likely than not that the Respondent has received “click-through revenues” for diverting Internet users to competing websites. Such use is to be considered as commercial gain for purposes of the Policy, paragraph 4(b)(iv).
It is to point out that the lack of response of the Respondent avoids any plausible explanation and therefore the circumstances of the case focus on the Complainant’s allegations and evidence put forward.
Accordingly, the Panel is of the view that registering a well-known trademark as domain name and associating the domain name to a PPC and bid offer of the domain name while not having rights or legitimate interest and seemingly in a commercial activity, is to be considered a bad faith registration and use since no plausible good faith reason is on the file. The Panel concludes that such registration and use by the Respondent is deemed to have been in bad faith.
Therefore, the Complainant has met the third requirement as established in paragraph 4(a)(iii) of the Policy.
For all 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 <watsons.ph> be transferred to the Complainant.
Date: November 26, 2018