Stiefel Laboratories, Inc. v. JG Enterprise / Jonathan Gillham
Claim Number: FA1112001420354
Complainant is Stiefel Laboratories, Inc. (“Complainant”), represented by Maury M. Tepper, III of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is JG Enterprise / Jonathan Gillham (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clindoxylgel.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 19, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <clindoxylgel.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@clindoxylgel.com. Also on December 20, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant
requests that the domain name
be transferred from Respondent
to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <clindoxylgel.com> domain name is confusingly similar to Complainant’s CLINDOXYL mark.
2. Respondent does not have any rights or legitimate interests in the <clindoxylgel.com> domain name.
3. Respondent registered and used the <clindoxylgel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Stiefel Laboratories, Inc., is the owner of the CLINDOXYL mark. Complainant has registered with the Canadian Intellectual Property Office (“CIPO”) for the CLINDOXYL mark (Reg. No. TMA551054 registered September 19, 2001). The mark is used in connection with a prescription gel treatment for acne.
Respondent, JG Enterprise / Jonathan Gillham, registered the disputed domain name on April 2, 2011. The <clindoxylgel.com> domain name resolves to a website which provides information about Complainant’s product and competing products and links to competing acne products.
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 Respondent's 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 it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has 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.
Complainant contends that it has rights in the CLINDOXYL mark. Complainant has registered through the Canadian Intellectual Property Office (“CIPO”) for the CLINDOXYL mark (Reg. No. TMA551054 registered September 19, 2001) and provided the Panel with evidence of this registration. Complainant asserts that the mark is used in connection with a prescription gel treatment for acne. Panels have found that a complainant’s registration of a mark with a federal trademark authority, regardless of the location of the parties, is evidence of the complainant’s rights in that mark. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration of the CLINDOXYL mark demonstrates that Complainant has rights in the CLINDOXYL mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <clindoxylgel.com> domain name is confusingly similar to the CLINDOXYL mark. Respondent fully incorporates Complainant’s mark and simply adds the descriptive term “gel” and the generic top-level domain (“gTLD”) “.com” to the mark in the disputed domain name. Panels have previously held that the addition of a term which describes the complainant’s business conducted under a mark fails to differentiate the disputed domain name from the mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Panels have also held in the past that the addition of a gTLD is irrelevant to a determination of whether a disputed domain name is confusingly similar to a mark as it is a required element of every domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <clindoxylgel.com> domain name is confusingly similar to Complainant’s CLINDOXYL mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Where a complainant has made a prima facie case in support of the allegations it makes, the respondent has the burden of disproving these claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). If, however, the respondent does not submit to the panel a response to the complaint, the panel may infer that the respondent is void of rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that this has been supported by Complainant by evidence amounting to a prima facie case. The Panel is left without the benefit of a response from Respondent, and thus may infer that Respondent does not have rights or legitimate interests in the <clindoxylgel.com> domain name. However, the Panel will review the record for information which suggests otherwise under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS record for the <clindoxylgel.com> domain name lists “JG Enterprise / Jonathan Gillham” as the domain name registrant. Complainant argues that Respondent has no connection or affiliation to Complainant and Complainant has not consented to Respondent’s use of the CLINDOXYL mark. Complainant further asserts that Respondent does not have a business which is named closely to the <clindoxylgel.com> domain name. Panels have found that the complainant’s contentions as well as the WHOIS record for a disputed domain name are often illustrative of whether a respondent is commonly known by the <clindoxylgel.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name; see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues next that the <clindoxylgel.com> domain name is used for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <clindoxylgel.com> domain name resolves to a website which provides information about Complainant’s product as well as information about, and links to, competing acne products under headings such as “Neutrogena skiniD” and “AcneFree Killer Foams.” The panels in ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), and Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), found that a bona fide offering of goods or services or a legitimate noncommercial or fair use do not include using a disputed domain name to offer information and links to a Complainant’s competitors’ products. Therefore, the Panel finds that Respondent’s use of the <clindoxylgel.com> domain name to display links and information about competing products in the acne treatment industry is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant argues that the <clindoxylgel.com> domain name was registered and is used in order to disrupt Complainant. The <clindoxylgel.com> domain name displays information about Complainant and its competitors’ products as well as hyperlinks to Complainant’s competitors’ products in the acne treatment industry. These links are listed under headings such as “Time To Treat Your Acne” and “AcneFree Killer Foams.” Panels have held previously that a respondent’s bad faith is evident when a disputed domain name is registered and used in order to display competing links. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel therefore finds that Respondent’s bad faith registration and use of the <clindoxylgel.com> domain name is demonstrated by Respondent’s disruptive display of competing links pursuant to Policy ¶ 4(b)(iii).
Complainant further asserts that the registration and use of the <clindoxylgel.com> domain name is a product of Respondent’s intent to take commercial advantage of the potential for confusion as to the source of the disputed domain name. The <clindoxylgel.com> domain name displays information about Complainant’s products and competing products. The <clindoxylgel.com> domain name also displays links under headings such as “Remove Acne @ $40/Month” to competing acne treatment products. The Panel finds that many of the Internet users who seek out Complainant will ultimately find Respondent given the confusingly similar nature of the disputed domain name. Given the similarity of the domain name and information about Complainant’s products, Internet users will become confused as to the source or affiliation of the disputed domain name. Presuming that only Complainant can use its own mark, the Internet users may believe that Complainant is the source of the <clindoxylgel.com> domain name and click through the links displayed on the disputed domain name. The Panel infers that Respondent receives compensation for the Internet users it directs through these links. Therefore, the Panel finds that Respondent registered and is using the <clindoxylgel.com> domain name in order to take commercial advantage of Internet users’ confusion as to the source, sponsorship, or affiliation of the disputed domain name. The Panel determines that this constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the CLINDOXYL mark. Complainant asserts that the fact that the disputed domain name is made up of only Complainant’s mark and a descriptive term is evidence of Respondent actual knowledge as well as the fact that Respondent displays competing hyperlinks. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel makes such a determination in this case.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clindoxylgel.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 26, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page