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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Galderma S.A. v. Eric Kaiser, Chairut Kompeerapun
Case No. D2003-0495
1. The Parties
The Complainant is Galderma S.A. of Fort Worth, Texas, United States of America, represented by Cole Ramey of Crouch & Inabnett, L.L.P of Dallas, Texas, United States of America.
The Respondents are Eric Kaiser of Colorado Springs, Colorado, United States of America, and Chairut Kompeerapun of Pakpreaw, Muang, Thailand.
2. The Domain Names and Registrar
The disputed domain names <buydifferin.com> and <erythromycin-adapalene-differin-gel-cream-acne-medication.com> are registered with Stargate Communications.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2003. On June 24, 2003, the Center transmitted by email to Stargate Communications a request for registrar verification in connection with the domain names at issue. On June 27, 2003, Stargate Communications transmitted by email to the Center its verification response confirming that the Respondent, Eric Kaiser, is listed as the registrant. 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 Respondents of the Complaint, and the proceedings commenced on June 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2003. The Respondents did not submit any response. Accordingly, the Center notified the Respondents of default on July 25, 2003.
The Center appointed Sandra Franklin as the sole panelist in this matter on August 5, 2003. 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
Complainant is the owner of eighty-seven worldwide trademarks and twenty pending registrations for the mark DIFFERIN. DIFFERIN has been in commercial use since 1996, and the mark has become incontestable. Complainant also holds numerous United States and international marks for GALDERMA and Galderma’s corporate logo, under which Complainant manufactures, markets, distributes and promotes the topical acne cream DIFFERIN.
5. Parties’ Contentions
A. Complainant
Complainant makes the following assertions:
1. Respondents’ <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names are confusingly similar to Complainant’s marks.
2. Respondents do not have any rights or legitimate interests in the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names.
3. Respondents registered and used the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names in bad faith.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondents’ failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondents have no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has clearly established rights in the mark DIFFERIN by appending evidence of numerous registrations and pending registrations for the mark. Complainant has used DIFFERIN since 1996, and the mark has become incontestable. Respondents’ domain names incorporate Complainant’s mark DIFFERIN and merely add other descriptive words to it. One of the added words is ADAPALENE, the active ingredient in DIFFERIN, patented by Complainant. Respondents are not authorized by Complainant to use the mark in any way, yet Respondents’ website repeatedly displays both Complainant’s mark DIFFERIN and its corporate name GALDERMA. This creates a likelihood of confusion as well as a danger to Complainant that harmful products are being improperly sold under its marks.
It has
been held
in innumerable
previous
cases that
the addition
of non-distinctive
and descriptive
words to
a trademark
creates
confusion,
and particularly
where a
competitor
uses an
established
mark to
sell similar
or identical
goods. See,
for example,
Pfizer,
Inc. v.
Order Viagra
Online,
WIPO
Case No.
D2002-0366.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Respondents
did not
submit a
Response
to the Panel
in this
proceeding.
Since Respondents
have not
provided
any circumstances
showing
that they
had rights
or legitimate
interests
in the disputed
domain names,
the Panel
will accept
as true
all allegations
and inferences
as set forth
by Complainant
in the Complaint.
See G.D.
Searle &
Co. v. Martin
Marketing,
FA 118277,
National
Arbitration
Forum, October 1, 2002,
holding
that where
Complainant
has asserted
that Respondents
have no
rights or
legitimate
interests
with respect
to the domain
name, it
is incumbent
on Respondents
to come
forward
with concrete
evidence
rebutting
this assertion
because
this information
is "uniquely
within the
knowledge
and control
of the respondent";
see America
Online,
Inc. v.
AOL Internatinal,
WIPO
Case No.
D2000-0654,
finding
no rights
or legitimate
interests
where Respondents
fail to
respond.
The WHOIS contact information does not indicate that Respondents are commonly known by the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names. The disputed domain names are very similar to Complainant’s web site "www.differin.com" and employ Complainant’s trademark DIFFERIN. Thus, the Panel finds that Policy paragraph 4(c)(ii) does not apply to Respondents. See Tercent Inc. v. Lee Yi, FA 139720, National Arbitration Forum, February 10, 2003, stating "nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name" as one factor in determining that Policy paragraph 4(c)(ii) does not apply; see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718, National Arbitration Forum, February 6, 2003; "Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy paragraph 4(c)(ii) does not apply to Respondent."
Respondents
are not
using the
disputed
domain name
in connection
with a bona
fide offering
of goods
or services
or for a
legitimate
noncommercial
or fair
use. In
fact, Respondents
are purposely
capitalizing
on the trade
value of
Complainant’s
well-established
and heavily
marketed
trademarks
to sell
competing
goods, the
antithesis
of bona
fide use.
See Peter
Frampton
v. Frampton
Enterprises,
Inc.,
WIPO
Case No.
D2002-0141,
which held
that the
use of a
domain name
which incorporates
a registered
mark in
order to
sell products
in the same
class as
mark holder
inherently
and intentionally
seeks to
exploit
user confusion,
and therefore
cannot constitute
bona fide
use. The
Panel finds
that Policy
paragraph
4(c)(i)
and Policy
paragraph
(4)(c)(iii)
do not apply
to Respondents.
For the foregoing reasons, the Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
This Panel
finds that
Respondents
have registered
and used
the <buydifferin.com>
and <erythromycin-adalpene-differin-gel-cream-acne-medication.com>
domain names
primarily
for the
purpose
of disrupting
Complainant’s
business,
indeed by
directly
competing
with Complainant
by selling
or attempting
to sell
products
patented
and trademarked
by Complainant.
In response
to a cease
and desist
request
from Complainant,
Respondents
had previously
agreed to
stop using
domain names
incorporating
Complainant’s
mark DIFFERIN.
It is evidence
of bad faith
that one
of the Respondents
then re-registered
the domain
name <buydifferin.com>
and promptly
sold it
to a third
party, allegedly
in Thailand,
also a Respondent
herein.
Such use
has routinely
been held
to demonstrate
bad faith.
See Bartercard
Ltd &
Bartercard
International
Pty Ltd.
v. Ashton-Hall
Computer
Services,
WIPO
Case No.
D2000-0177;
Freedom
Flag, Inc.,
dba Falls
Flag &
Banner Co.
v. Flags
Unlimited,
WIPO
Case No.
D2002-0478.
Respondents
also maintain
dozens of
similar
domain names
and/or websites
that contain
the trademarks
of others.
Such a pattern
has also
routinely
been held
as evidence
of bad faith.
See, for
example,
Lancôme
Parfums
et Beauté
& Cie
v. SL, Blancel
Web, WIPO
Case No.
D2001-0028.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
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 <buydifferin.com> and <erythromycin-
adalpene-differin-gel-cream-acne-medication.com> domain names be transferred to Complainant.
Sandra Franklin
Sole Panelist
Dated: August 11, 2003