Scholl’s Wellness Company LLC, Inc. v. Kristian Hertz
Claim Number: FA2301002029515
Complainant is Scholl’s Wellness Company LLC, Inc. (“Complainant”), represented by Vanessa A. Ignacio of Lowenstein Sandler LLP, US. Respondent is Kristian Hertz (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drschollschile.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 27, 2023; Forum received payment on January 27, 2023.
On January 31, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <drschollschile.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2023 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@drschollschile.com. Also on February 6, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant is a leading manufacturer in foot care which was founded in 1906 and currently operates in over sixty international markets. Complainant has rights in the DR. SCHOLL mark through its use in commerce as well as its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 512,484 registered July 19, 1949). It also operates its primary website at www.drscholls.com. Respondent’s <drschollschile.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the DR. SCHOLL mark in its entirety and merely adds the geographic term “chile” as well as the “.com” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <drschollschile.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the DR. SCHOLL mark. Additionally, Respondent does not make a bona fide offering of goods or services with the disputed domain name nor does it make a legitimate noncommercial or fair use. Instead, the disputed domain name is used in a fraudulent scheme to pass itself off as Complainant and steal users’ credit card and other financial information. Finally, the disputed domain name is currently suspended by its Registrar.
Respondent registered and uses the <drschollschile.com> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Additionally, Respondent engages in a fraudulent scam. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DR. SCHOLL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated its ownership of rights to the DR. SCHOLL trademark and the <drschollschile.com> domain name is confusingly similar to such mark;
- Respondent has no rights or legitimate interests where it is not commonly known by the <drschollschile.com> domain name and its use thereof, as part of a fraudulent scam to harvest sensitive personal and financial information from users, is neither a bona fide offering nor a legitimate noncommercial or fair use; and
- Respondent’s use of the <drschollschile.com> domain name for a fraudulent scheme disrupts Complainant’s business and seeks commercial gain based on a likelihood of confusion with the DR. SCHOLL trademark leading to the conclusion that the domain name was registered and is used in bad faith.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the DR. SCHOLL mark based upon the registration with the USPTO[i]. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides copies of many of its registration certificates for the DR. SCHOLL mark with the USPTO[ii], the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
Next, Complainant argues that Respondent’s <drschollschile.com> domain name is identical or confusingly similar to the DR. SCHOLL mark as it contains the mark in its entirety and merely adds the term “Chile” and the “.com” gTLD. The addition of a geographic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”). See also Ceridian HCM, Inc. v. any name, FA 2009022 (Forum Sep. 23, 2022) (“The gTLD ‘.com’ does not serve to distinguish the Domain Name from the Complainant’s mark.”) As the <drschollschile.com> domain name incorporates the entirety of Complainant’s DR. SCHOLL mark and adds only the geographic term “Chile” and the “.com” TLD, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <drschollschile.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the DR. SCHOLL mark. It is well-accepted that WHOIS information may be reviewed when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Kristian Hertz,” and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use the DR. SCHOLL mark. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or that it makes a legitimate noncommercial or fair use thereof as Respondent uses the <drschollschile.com> domain name to pass itself off as Complainant in perpetration of a fraudulent scheme. Where the respondent uses a disputed domain name to pass itself off as a complainant for fraud, phishing, and the like, Panels routinely find that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”) See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant asserts that the Respondent’s website was “fraudulently mimicking the Complainant’s brand to steal website users’ credit card information.” Although it does not present any screenshots of such website, it does submit into evidence three Spanish language news articles, each of which list a number of web addresses by name, including the <drschollschile.com> domain, and warns consumers of the dangers posed by these sites. They mention that these websites offer “false discounts” and characterize them as “scams” and those operating them as “criminals”. One of these articles references Chile’s Under Secretary of the Interior and mentions involvement by that government’s Computer Security Incident Response team to stop “these false pages which criminals use to steal the credentials or bank data of their victims or make supposed sales whose products will never be sent to buyers.” Another notes that these sites “simulate the websites of the original products, but they are really labels to steal the data of the users' credit cards”. The Panel finds this to be credible secondary evidence that the <drschollschile.com> domain name was, in fact, operated in the manner described and further notes that the domain name has been suspended by its Registrar. As Complainant has made a prima facie showing which has not been rebutted by Respondent, who has not participated in these proceedings, by a preponderance of the evidence it is determined that Respondent fails to use the disputed domain name for a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent had knowledge of Complainant’s rights in the DR. SCHOLL mark at the time it registered the <drschollschile.com> domain name. A respondent’s use of a disputed domain name can, under the right circumstances, indicate its prior knowledge of the affected trademark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Fame and notoriety of an asserted mark may also counsel towards a finding of actual knowledge. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) Complainant claims that “DR. SCHOLL is a trusted brand in over sixty international markets” and that it has “become well-known and recognized by consumers”. However, its only evidence submitted on these points are its USPTO trademark registration certificates and a screenshot of its <drscholls.com> website home page. Despite the Panel’s personal familiarity with the mark, it finds that this is a rather thin record as trademark registrations can evidence rights but they, along with images of a complainant’s own website, do not speak to a mark’s reputation or scope as perceived by consumers. However, the fact that Respondent has engaged in fraudulent activity founded upon drawing users to domain name and website that uses the DR. SCHOLL mark makes it more likely than not that Respondent did have actual knowledge of Complainant’s mark at the time that it registered the <drschollschile.com> domain name.
Next, Complainant argues that Respondent registered and uses the <drschollschile.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where the respondent uses a disputed domain name to pass itself off as a complainant, Panels have found evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) Under the circumstances of Respondent’s use of the <drschollschile.com> domain name for fraudulent activity, as described in the prior section, the Panel finds that Respondent has disrupted Complainant’s business and drawn users to its website for commercial gain based upon confusion with the DR. SCHOLL trademark. Thus, it has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Complainant also asserts that Respondent uses the <drschollschile.com> domain name to further a fraudulent phishing scam by prompting users to enter sensitive information. Such practice of luring users into revealing personal and financial information has been held to evidence bad faith under the Policy. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”) Complainant provides copies of various Chilean news articles specifically identifying the <drschollschile.com> domain name as being used for a scam website and Respondent has not filed a Response or made any submission in this case to counter Complainant’s evidence or otherwise explain its actions. In light of the evidence presented, the Panel finds that Respondent has engaged in fraudulent and phishing activities and thus has registered and uses the disputed domain name in bad faith per 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 <drschollschile.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 10, 2023
[i] Complainant also claims ownership of a number of trademark registrations in Chile but it submits only a table listing these and no copies of registration certificates or relevant screenshots from the Instituto Nacional de Propiedad Industrial website are submitted.The Panel does not consider mere textual lists of trademark registrations to be properly constituted “evidence” of the same and, as such, these registrations will not be considered here.
[ii] The submitted trademark registration certificates list a variety of different entities as their owners, none of which are the named Complainant in this case. Nevertheless, the Panel has reviewed the assignment records of the USPTO and found that the named Complainant is, in fact, the current owner of the submitted US trademarks.
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