WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DSE Healthcare Solutions, LLC v. Direct Privacy ID 19AC8

Case No. D2011-0468

1. The Parties

The Complainant is DSE Healthcare Solutions, LLC of New Jersey, United States of America, represented by Porzio, Bromberg & Newman, P.C. of the United States of America.

The Respondent is Direct Privacy ID 19AC8 of Grand Cayman, Overseas Territory of the United Kingdom.

2. The Domain Name and Registrar

The disputed domain name is <albolene.com>. It is registered with directNIC Ltd. (the “Registrar”).

3. Procedural History

According to information and documents provided to the Panel by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:

The Complaint was filed with the Center on March 11, 2011.

On March 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.

On March 14, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s 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 Rules paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2011. The notice was sent to the Respondent by post/courier and by email to two postal addresses and three email addresses, as required by Rules paragraph 2(a).

In accordance with Rules paragraph 5(a), the due date for the Respondent to submit its Response was April 6, 2011. The Respondent did not submit a Response.

On April 7, 2011, the Center formally notified the parties that the Respondent was in default because it failed to submit a Response, and that the proceeding would continue with a single-member Administrative Panel. The notice was sent to the Respondent by email to two email addresses. One of the emails was rejected because the address was not valid.

On April 13, 2011, the Center appointed Bradley Freedman as the sole panelist in this matter. Bradley Freedman submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.

Based upon the information provided by the Center, the Panel finds that it was properly constituted in accordance with the Policy, Rules and Supplemental Rules, and that all technical requirements for this proceeding have been met.

4. Factual Background

The following information is derived from the Complaint and supporting evidence submitted by the Complainant:

The Complainant is an American company engaged in the distribution and sale of a variety of products. One of those products is a moisturizing skin care cream that is marketed and sold under the name “Albolene”, and is sold in various retail outlets and over the Internet. The Complainant uses the domain name <albolenecleanser.com> for a website through which the Complainant sells its Albolene skin care cream.

The Complainant and its predecessors have used the “Albolene” name and trademark in association with health, beauty and cosmetic products in the United States of America since as early as January 1890. In 1906, the Complainant’s predecessor in interest obtained a United States trademark registration for ALBOLENE (registration no. 56,690), but that registration expired.

The Complainant is the owner of current trademark registrations for ALBOLENE for use in association with skin care products in various countries, including the United States of America, (no. 1,752,158, registered February 16, 1993), Canada (no. 777,040, registered September 14, 2010), the European Community (no. 007204233, registered November 10, 2009) and Puerto Rico (no. 6,771, registered March 10, 1948).

The disputed domain name was registered on February 29, 2000 by a registrant named “Speedy Web”, and the registration was transferred to the Respondent sometime after December 1, 2010.

The Respondent uses the disputed domain name for a website that displays “Sponsored Results for Albolene”, which are links to third party websites, such as www.theladieschoices.com, BeautifulReviews.com and BeautyBlogTalk.com, that advertise and sell the Complainant’s Albolene skin care cream and other competing products.

There is no commercial relationship between the Complainant and the Respondent. The Complainant has not licensed or otherwise authorized the Respondent to use the ALBOLENE trademark.

The Respondent does not use the word “albolene” as a trademark or otherwise, except in connection with the disputed domain name. The Respondent is not commonly known by the name “Albolene”. The Complainant is not aware of any trademark application or registration by the Respondent for the mark ALBOLENE.

On December 1, 2010, the Complainant’s attorneys sent a demand letter to Speedy Web, the original registrant of the disputed domain name, by both email and certified mail. The email was rejected as “undeliverable” and the certified mail was not claimed. Nevertheless, sometime after December 1, 2010, registered ownership of the disputed domain name was transferred to the Respondent. There was no immediate change to the nature or content of the website used in association with the disputed domain name.

The Respondent has not filed a Response to the Complaint or answered the Complainant’s factual assertions or evidence in any other manner.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(i)The Complainant is the owner of the ALBOLENE trademark, and the disputed domain name is identical or confusingly similar to the Complainant’s ALBOLENE trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) The Respondent registered and is fraudulently using the disputed domain name in bad faith to mislead and divert Internet users to a website for commercial gain.

B. Respondent

The Respondent has not filed a Response to the Complaint or answered the Complainant’s contentions in any other manner.

6. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants.

The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy paragraph 4(a): (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant 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. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy.

Rules paragraph 10(a) requires that the Panel ensure that each party is given a fair opportunity to present its case. The Respondent was given notice of this proceeding in accordance with Rules paragraph 2. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint. Further, the Registrar’s Terms of Service (section 19(c)) requires the Respondent to keep its contact information (including postal address and email address) current and complete. The Respondent cannot hide behind its provision to the Registrar of incorrect or out-of-date contact information. In the circumstances, the Panel finds that the Respondent has been given a fair opportunity to answer the Complaint, and in accordance with Rules paragraph 14(a) the Panel will proceed to a decision.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply, as set forth in this decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 4.6.

A. Identical or Confusingly Similar

The Complainant is the owner of the trademark ALBOLENE, registered in various countries for use in association with various wares, including skin care cream. The Complainant uses the ALBOLENE trademark to advertise its products, including through a website that uses the domain name <albolenecleanser.com>. The Complainant asserts that the Complainant and its predecessors have used the ALBOLENE trademark in association with health, beauty and cosmetic products in the United States of America since as early as January 1890, and the earliest current ALBOLENE trademark registration was in 1948 (Puerto Rico). The Complainant’s assertions are supported by documentary evidence. The Respondent has not contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the trademark ALBOLENE.

The Complainant’s ALBOLENE trademark was registered decades before Speedy Web registered the disputed domain name in February 2000 and before the registration was transferred to the Respondent in 2010.

The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainant’s trademarks. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in the decisions is that the appropriate test for confusing similarity is a literal comparison of the disputed domain name and the complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 1.2. The literal comparison approach is supported by a number of considerations, which have been discussed in various decisions. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung, WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC, WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaFinance.co.uk, WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant’s trademark.

The disputed domain name and the Complainant’s ALBOLENE trademark are visually and phonetically similar. The only difference between the Complainant’s ALBOLENE trademark and the disputed domain name is the “.com” suffix. The “.com” suffix is irrelevant for the purpose of determining whether a disputed domain name is identical or confusingly similar to a trademark. Rather, one looks to the second level domain for that determination, since the “.com” suffix is merely descriptive of the registry services. See WIPOOverview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 1.2; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Ticketmaster Corporation v. Harold R. Brown, II, Harold R. Brown III, and Ted Waitt, WIPO Case No. D2001-0716; The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; Pancil, LLC v. Wan-Fu China, Ltd., WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC, WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaFinance.co.uk, WIPO Case No. D2008-0113.

In light of the Respondent’s use of the disputed domain name, and in the absence of any explanation or rationale put forward by the Respondent for its registration and use of the disputed domain name, the Panel finds that the disputed domain name was intended by the Respondent to be confusingly similar to the Complainant’s ALBOLENE trademark.

For those reasons, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s ALBOLENE trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

B. Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interest in the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in the decisions is that the complainant’s burden of proof regarding this element must be applied in light of the fact that the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or interests in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087; and Alfa Laval AB, Laval Corporate AB v. Caribbean Online International Ltd. (ALFALAVALL-COM-DOM), WIPO Case No. D2007-1893.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is not commonly known by the “Albolene” name, does not use the name “Albolene” to identify any product or service, does not have any trademark application or registration for the mark ALBOLENE, and uses the disputed domain name for a website that provides links to third party websites, including websites of the Complainant’s competitors (such as <www.theladieschoice.com>).

Except for the assertions in the signed and certified Complaint, the Complainant has not provided any evidence of trademark searches or other investigations to indicate that the Respondent does not have any interest in any marks that include the term “albolene” and is not commonly known as “Albolene”. In some circumstances, the omission of that evidence might be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this dispute, the signed and certified Complaint together with an adverse inference from the Respondent’s failure to reply to the Complaint or provide any justification for its registration and use of the disputed domain name, are sufficient to satisfy the Complainant’s evidentiary burden.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, it is incumbent upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.

Policy paragraph 4(c)(i) is not applicable. To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing search results or links to other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s registered ALBOLENE trademark, which is specific to the Complainant in connection with its skin care products and has been used for many years; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent’s name or business; and (c) the Respondent does not use the disputed domain name to advertise or sell its own wares or services, but to provide “Sponsored Links” to other websites offering products in competition to the Complainant. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 and Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of the Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable.

For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(b)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.

“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances are deemed evidence that a registrant has registered and used a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Policy expressly states that those circumstances are non-exclusive.

In order to establish that a registrant registered and is using the disputed domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set forth in Policy paragraph 4(b).

Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondent’s website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or its ALBOLENE trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.

The Panel finds that the Respondent knew of the Complainant’s ALBOLENE trademark, and registered and is using the disputed domain name in order to confuse and divert Internet traffic to the Respondent’s website, based upon the following circumstances: (a) the Complainant’s ALBOLENE trademark is specific to the Complainant in connection with its skin care products, and has been used for many years; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent or its business or services; (c) the Respondent uses the disputed domain name for a website that provides sponsored links to other websites offering products in competition to the Complainant; (d) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name; and (e) the Respondent has not denied any knowledge of the Complainant or its ALBOLENE trademark. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name.

The Panel also finds that the Respondent’s use of the disputed domain name results in commercial gain to the Respondent. It is well known that many websites generate revenue from click-through advertising by directing traffic to other websites. The sponsored links on the Respondent’s website are intended to generate revenue. Based upon the information apparent from the Respondent’s website, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent.

In addition, Speedy Web’s transfer of registered ownership of the disputed domain name after receiving the Complainant’s December 1, 2010 demand letter appears to constitute “cyberflying”, which is the term used to describe an attempt to avoid or delay judicial or UDRP proceedings by changing domain name registration details or registrars after learning of a complaint. Neither the Respondent nor Speedy Web have offered any explanation for the transfer of the disputed domain name. The Panel agrees with the conclusion of other panels that “cyberflying” is itself an indication of bad faith registration and use of a domain name under Policy paragraph 4(b). See Pandora Jewelry, LLC v. wutianhao, WIPO Case No. D2010-0286 and Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

In the circumstances, the Panel finds, pursuant to Policy paragraph 4(b)(iv), that the Respondent registered and is using the disputed domain name in bad faith to confuse and divert Internet traffic to its website for commercial gain.

In the circumstances, the Panel need not consider whether Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds, pursuant to Policy paragraph 4(b)(iv), that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

The Complainant has established each of the three requirements set forth in Policy paragraph 4(a) – the disputed domain name is identical or confusingly similar to the Complainant’s ALBOLENE trademark, the Respondent does not have any rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.

The Panel orders that the disputed domain name <albolene.com> be transferred to the Complainant.

Bradley Freedman
Sole Panelist
Dated: April 27, 2011