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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Reviderm AG v. Niko International

Case No. D2007-0113

 

1. The Parties

The Complainant is Reviderm AG, Oberhaching, of Germany, represented by Nicola Busch, of Germany.

The Respondent is Niko International, Seattle, Washington, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <reviderm.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2007. On January 30, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 30, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2007.

The Center appointed James A. Barker as the sole panelist in this matter on March 7, 2007. 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

In the absence of a Response, the following facts are drawn from the Complaint.

The Complaint is based on German-registered trademarks comprising the word REVIDERM. Those marks were registered in 1993. The registered owner of those trademarks in Germany is MMS Medical & Management Services of Zug, Switzerland.

The Complainant is the exclusive licensee of those marks. The Complaint provides a copy of an authorization from MMS Medical & Management Services dated January18, 2007. That authorization indicates that the Complainant is the exclusive licensee of the REVIDERM marks, and indicates that the Complainant is authorized to bring the Complaint in its own name.

The Complainant and its predecessor have continuously used the trademarks REVIDERM since 1993.

The disputed domain name was first registered on April 9, 1998.

At the date of this decision, the disputed domain name resolved only to a website including a list of links to various products, largely including cosmetic-related products. The website also states that it is “under construction”.

 

5. Parties’ Contentions

A. Complainant

The following contentions are summarized from the Complaint.

Identical or confusingly similar

The disputed domain name consists solely of the trademark REVIDERM. Therefore the identity between the domain name and the Complainant’s trademarks is obvious.

Rights or legitimate interests

The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent has taken advantage of the good reputation of the trademark REVIDERM and its establishment in the market by enticing the customers of the Complainant away. The Respondent’s use of the disputed domain name has blocked the Complainant from reflecting its mark in a domain name.

The Respondent’s administrative contact for the disputed domain name is listed as “Mr D. Suzuki”, who is also described as president of the company Bio-therapeutic Inc., on the website “www.spa20-20.com”. The company Bio-Therapeutic Inc. maintains websites at “www.bio-therapeutic.com” and “www.microcurrent.com”. Those websites are also registered in favour of Mr. D. Suzuki, who has the same email address as the listed administrative contact for the disputed domain name in this case.

The Complainant claims that the disputed domain name reverted at some point to the Respondent’s website at “www.microcurrent.com”. (Although the Complainant did not provide direct evidence of it, at the date of this decision, that website markets “non-invasive anti-aging services and skin care products”.) Bio-Therapeutic Inc. markets similar goods and services to the Complainant, incluing cosmetic products relating to anti-aging and ‘microdermabrasion’.

The Complainant and its predecessor have been active in the market since 1986, and distributes its products and apparatuses worldwide, including to the United States where the Respondent is registered as residing.

The Complainant made several attempts to contact the Respondent, but none of its correspondence was answered. As the Respondent can neither be found through the Internet, nor by post, it has to be assumed that the Respondent is only a dummy company, created by the administrative contact, to give the registration of the disputed domain name the look of legitimacy.

Bad faith

For similar reasons, the Complainant claims that the Respondent has registered and used the dispute domain name in bad faith.

The Complainant claims that, even if the Respondent exists in fact, the Respondent knew or must have known that by the registration of this domain name a direct competitor of its administrative contact will be prevented from reflecting its trademarks in a corresponding domain name. (Such a use partly goes towards evidence of bad faith for the purpose of paragraph 4(b)(ii) of the Policy.)

The Complainant also claims that the Respondent registered the disputed domain name to disrupt the Complainant’s business, by creating a likelihood of confusion with the Complainant. The Complainant states that there is a clear risk that international customers or interested users of its products would try the domain name <www.reviderm.com> to locate the Complainant. In other words, the Complainant appears to make the claim that the Respondent has registered and used the disputed domain name in bad faith, for the purpose of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, or make any other communication in connection with this case.

 

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant must prove each of these three elements, which are discussed in turn as follows.

A. Identical or Confusingly Similar

The Complainant provided evidence of its exclusive rights to use the trademark REVIDERM.

The disputed domain name is identical to that trademark, excluding the “.com” extension which is not relevant for the purpose of the comparison.

The Panel therefore finds that the Respondent has established that the disputed domain name is identical to a trademark in which it has rights, for the purpose of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has clearly established a prima facie case against the Respondent. Having established that case, the burden then shifts to the Respondent to demonstrate its rights or legitimate interests. The Respondent’s failure to provide a Response means that it has not met this burden.

The Panel accepts the Complainant’s contention that there is a connection between the Respondent in this case, its administrative contact (“Dr. D Suzuki”), and the websites at “www.microcurrent.com” and “www.bio-therapeutic.com”. Both of those websites indicate their connection to a “Dr. D. Suzuki”, and give contact details which bear similarities to the Respondent in this case. There is no evidence in the available record that the Respondent “Niko International” exists as a separate legal entity. For these reasons, the Panel treats the Respondent and “Dr. D. Suzuki” as related for the purpose of this proceeding.

The only apparent interest the Respondent has in the disputed domain name is that it relates to cosmetics and “microdermabrasion” (that is, cosmetic skin removal) because of its association with the Complainant’s products. Such a predatory use cannot establish a legitimate interest for the purpose of the Policy. The Respondent’s websites and products do not appear to relate to use the mark REVIDERM. Even if they did, it would be difficult in the circumstances to conceive of a legitimate interest that the Respondent could establish by such a use.

For these reasons, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant appears to argue that that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b) of the Policy. In particular, the Complainant appears to argue (at least in part) that there is bad faith within the meaning of paragraphs 4(b)(ii) and (iv) of the Policy. Those paragraphs provide that there is evidence of bad faith where the Panel finds that the Respondent:

- 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 Respondent has engaged in a pattern of such conduct. (Paragraph 4(b)(ii))

- by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. (Paragraph 4(b)(iv))

In relation to paragraph 4(b)(ii) of the Policy however, the Complainant provides no evidence that the Respondent has engaged in a ‘pattern of conduct’ of registering domain names in bad faith. It is axiomatic that the Respondent’s registration of the disputed domain name prevents the Complainant from registering it. But this fact alone is not sufficient for a finding under paragraph 4(b)(ii) of the Policy.

In relation to paragraph 4(b)(iv) of the Policy, the Complainant provides no evidence that the Respondent did, in fact, direct Internet users to its own website by creating confusion as described in that paragraph. The Complaint purports to attach an undated copy of the website at “www.reviderm.com”, however the copy that is attached to the Complaint appears only to be a copy of the Complainant’s own website at “www.reviderm.de”. And, as noted above, at the date of this decision there is no substantive website at “www.reviderm.com”, other than a list of links and statement that the website is “under construction”. There is otherwise no evidence, other than the assertion in the Complaint, that the domain name reverted, at any stage, to the Respondent’s websites at “www.bio-therapeutic.com” and “www.microcurrent.com”. This means that there is not, in the Panel’s view, sufficient evidence to support a finding for the purpose of paragraph 4(b)(iv).

However, the circumstances set out in paragraph 4(b) of the Policy are illustrative. Other evidence may demonstrate bad faith. The Panel finds that there is such evidence, for the following reasons.

In this case, the lack of evidence that the Respondent has actively used the disputed domain name is not a bar to finding that the Respondent has nevertheless acted in bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which has been cited with approval by a plethora of subsequent panels: For a more recent example, see McDonald’s Corporation v. Easy Property, WIPO Case No. D2006-1162. That case involved facts relevantly similar to this one, including that the then complainant alleged, but provided no evidence, that the then disputed domain name reverted to the respondent’s website.) That is, the Respondent’s bad faith registration and subsequent passive holding may, in the appropriate circumstances, amount to bad faith registration and use for the purpose of paragraph 4(a)(iii) of the Policy.

The Policy does not define “bad faith” for this purpose. Panels, in considering whether a domain name is registered in bad faith, typically consider certain factual circumstances as indicative of bad faith. In other words, whether there is bad faith depends on the circumstances of the particular case.

Certain commonly occurring facts have often been found to be evidence of bad faith. Those circumstances include the following, as used in the Nuclear Marshmallows case (cited in that case as cumulative evidence of bad faith):

- the complainant’s trademark has a strong reputation and is widely known. (The inference from this factor is that the respondent knew of the complainant and its mark when it registered the disputed domain name, and sought to benefit or exploit the complainant’s reputation.)

- the respondent provided no evidence of any actual or contemplated good faith use by it of the domain name.

- the respondent took active steps to conceal its true identity.

- the respondent actively provided, and failed to correct, false contact details, in breach of its registration agreement.

- it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate.

Panels in other cases have found a range of other facts, in the particular case, to be evidence of bad faith. Examples of such facts include the following, in no particular order:

- the domain name has no apparent relation or relevance to the respondent’s business (see, e.g. Cobham Plc v. Neog Inc, WIPO Case No. D2005-0503),

- the domain name reverts to a ‘portal’ website (Humana Inc. v Cayman Trademark Trust, WIPO Case No. D2006-0073),

- the respondent failed over a period of some years to produce any meaningful website at the disputed domain name. (Bulmers Limited, Wm. Magner Limited v. Applepie Solutions Limited, WIPO Case No. D2005-1274).

Bad faith under paragraph 4(a)(iii), fundamentally, requires that a respondent both knows of the complainant and, because of that knowledge, primarily intends to capitalize on the value of the complainant’s mark by registering it as a domain name. For statements to this effect, see e.g. Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038; Jupiters Limited v. Aaron Hall, WIPO Case No. 2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528. As noted by the panel in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, “[i]n assessing ‘bad faith’ for the purpose of the Policy, the motivation of the Complainant is all-important.”)

In this respect, it is notable that all the factors set out in paragraph 4(b) of the Policy require some level of knowledge by the Respondent of the Complainant’s rights, and an intent to exploit or disrupt those rights. Similarly, the examples of the factual circumstances set out above either suggest knowledge of a complainant, or suggest that the respondent was not making its own legitimate use of the relevant domain name. Those latter factors reinforce, or at least suggest nothing to contradict, a conclusion that the respondent was acting in a predatory way, to capitalize on the complainant’s mark or to disrupt its business.

In this case, the facts before the Panel indicate that the Respondent was on balance aware of the Complainant, and likely sought to disrupt or exploit the reputation of the Complainant’s marks. Those facts include the following:

- The Complainant has provided evidence of the reputation of its marks, including its on-line presence, and magazine advertising and articles relating to its products, from as far back as 1993. The evidence of the Respondent’s own websites suggests that it operates in the same field of business as the Complainant.

- There is no indication, from the content of the Respondent’s websites, that it has any substantive connection with the mark or word “reviderm”. That term appears to the Panel to be an invented term and, as such, not one which a Respondent would naturally choose, unless it was aware of the Complainant’s mark.

- There is no evidence in the available record that the Respondent (the named registrant) is a real legal entity. The Respondent also provided no reply to various communications to it from the Complainant. These facts suggest that the Respondent may have intended to conceal its real identity.

- The other factors, found to be evidence of bad faith in the Nuclear Marshmallows and other cases as cited above, also appear to be factors that similarly apply in the present case.

The first two of these facts suggest that the Respondent likely had actual knowledge of the Complainant and its marks.

The remaining facts support, or at least provide no contrary evidence to the conclusion suggested by the first two facts. That is, these facts suggest that the Respondent had no legitimate purpose of its own in registering the disputed domain name. Having no legitimate purpose of its own, and knowing of the Complainant’s marks, the most likely inference is that the Respondent intended to capitalize on the value of the Complainant’s marks or, at least, disrupt the Complainant’s business.

For these reasons, the Panel finds that the Respondent on balance registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <reviderm.com>, be transferred to the Complainant.


James A. Barker
Sole Panelist

Dated: March 21, 2007

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-0113.html

 

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