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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EpiTan Limited v. Sam Boswell

Case No. D2005-0164

1. The Parties

The Complainant is EpiTan Limited, Melbourne, Victoria, Australia, represented by Minter Ellison, Melbourne, Victoria, Australia.

The Respondent is Sam Boswell, Texarkana, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <epitan.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2005. On February 11, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 11, 2005, Go Daddy Software 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, billing, 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 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on April 12, 2005. 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

The Complainant is a public pharmaceutical company, registered as such on December 14, 1999, in Victoria, Australia and listed on the Australian Stock Exchange on February 13, 2001, whose core business activity is the development of innovative dermatology products.

The Complainant has developed a drug, which it has called ‘Melanotan,’ that stimulates the body to make melanin, the dark pigment of a tan which is known to protect the body from skin damage caused by exposure to ultra-violet (UV) radiation - a known cause of skin cancer. The drug induces a protective tan without the need to expose the skin to harmful levels of UV radiation.

The Complainant expects sales revenues in the financial year 2005-6 in excess of AU$3 million, and, according to current independent estimates, sales of ‘Melanotan’ in Australia and New Zealand only are expected to exceed AU$50 million in the first two years.

The Complainant has both registered and common law rights in the trademark EPITAN. The Complainant’s trademark registrations are as follows:

- Australian Trademark Registration no. 825721, dated March 1, 2000: EPITAN in International Class 5 for goods being “Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressing; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.”

- Australian Trademark Registration no. 862967, dated January 12, 2001: EPITAN in International Class 3 for goods being “Preparations for care of the skin; preparations for tanning the skin including preparations for tanning without sunlight.”

- Japanese Trademark Registration no. 4544817, dated February 22, 2002: EPITAN in International Classes 3 and 5 for goods being “Preparations for the care of the skin, other cosmetics and toiletries” and “Pharmaceutical preparations used in the prevention or reduction of the incidence of skin cancers, other pharmaceutical preparations” respectively.

- United States Trademark Registration no. 78/054046, dated November 9, 2004: EPITAN in International Class 5 for goods being “Pharmaceutical preparations used in the prevention or reduction of the incidence of skin cancers.”

Copies of the corresponding registration certificates have been submitted to the Panel.

In addition, the Complainant has also applied for registrations of the mark EPITAN in the European Community and Canada in International Classes 3 and 5 and in the United States in International Class 3 in respect of “non-medicated skin care preparations; skin gels for accelerating, enhancing or extending tans, namely preparations for tanning skin including preparations for tanning without sunlight.” Such applications were filed on February 2, 2001; June 8, 2001; and August 10, 2004, respectively.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

(Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The domain name in issue <epitan.com> is identical to the trademark EPITAN in which the Complainant has common law and registered rights as evidenced by the trademark registrations and trademark applications cited above.

Furthermore, through its extensive marketing and publicity efforts since January 2000, the trademark EPITAN has become very well known throughout the world and exclusively identified with the Complainant and its business. Evidence of the corresponding media coverage and publicity, in support of this contention, has been submitted to the Panel.

2. The Respondent has no rights or legitimate interests in respect of the domain name: (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

The Respondent has no legitimate interests in the domain name in issue <epitan.com> for the following reasons:

(1). The Respondent has not used or made any demonstrable preparations to use the domain name as a name in connection with a bona fide offering of goods or services. Since the Respondent registered the domain name on March 18, 2002, the Respondent has never operated a website at the address “www.epitan.com”.

(2). The Respondent has not been commonly known by the mark EPITAN. This is borne out in correspondence with the Complainant, which is referred to below. Neither has the Respondent made any legitimate or fair use of the domain name.

(3). The Respondent has not demonstrated any legitimate basis for registering the domain name.

Furthermore, the correspondence between the Complainant and the Respondent shows that the Respondent is well aware of the business and trademark of the Complainant and has been for several years. And such awareness predates the registration of the domain name.

3. The domain name was registered and is being used in bad faith:

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant only recently became aware of the existence of the domain name in issue <epitan.com> when it tried to register the domain name in May 2004.

A representative of the Complainant, Mr. Dickson, then approached the Respondent on May 9, 2004, by e-mail in the following terms:

“I notice that you are offering the domain name epitan.com for sale. I am interested in purchasing it. Can you give an indication of the price you are asking?”

The Panel has been provided with a copy of this e-mail.

The Respondent replied by e-mail to Mr. Dickson on June 1, 2004, as follows:

“I’m really just waiting for a good offer. I get several inquiries to purchase each week.”

The Panel has been provided with a copy of this e-mail.

As of December 15, 2004, the domain name <epitan.com>, when typed into an Internet browser, linked to the website of the domain name registrar, GoDaddy, produced the following message on the website:

“Interested in buying this domain? Inquire at “[the e-mail address of the Respondent]”.

The Panel has been provided with a copy of the print-out from the website dated December 15, 2004.

A representative of the Complainant, Ms. Bridgeman, then contacted the Respondent by e-mail on January 3, 2005, in the following terms:

“Dear Mr. Boswell, I write on behalf of EpiTan Limited. I note that you are the registrant in respect of the domain name EPITAN.COM. I also note that the domain name is advertised as being for sale. Please let me know the price by return e-mail to this address as soon as possible, but no later than January 7 2005.”

The Panel has been provided with a copy of this e-mail.

The Respondent replied by e-mail on January 7, 2005, as follows:

“Hello [ ], and thanks for your inquiry. Yes, I would like to sale (sic) the epitan.com domain. In fact, I had sent correspondence to Epitan a few times over the past two years without response. Today I am averaging about 8 inquiries per week from private individuals looking to purchase the domain and even a few confused customers wanting to purchase products. At this time I do not have a set price but would be open to selling for Epitan Limited stock options or even a lease option on the domain. I’ve owned stock in Epitan for a few years now and continue to increase my holdings. In fact, I would even be willing to work a lease for the domain where the lease money would go directly back into Epitan for direct stock purchase. Let me know if you are interested in any of these ideas.”

The Panel has been provided with a copy of this e-mail.

The e-mail reproduced above is highly noteworthy as:

(i) it unequivocally demonstrates that the Respondent has actively attempted to sell, or otherwise transfer for valuable consideration, the domain name to the Complainant (and any other interested buyers willing to pay a price acceptable to the Respondent); and

(ii) the e-mail contains evidence that the registration of the domain name <epitan.com> has resulted in consumer confusion, with members of the public mistakenly believing the domain name to be connected with the Complainant.

Ms. Bridgeman responded to the Respondent Mr. Sam Boswell’s e-mail by e-mail dated January 10, 2005, a copy of which has been provided to the Panel. In that e-mail, she emphasized to the Respondent the Complainant’s intellectual property rights in the EPITAN mark and noted that the registration and use of the domain name may infringe those rights. She also noted that the Respondent appears to have registered the domain name for the purposes of selling it at a profit. On behalf of the Complainant, she offered to reimburse Mr. Boswell’s reasonable expenses in registering the domain name in exchange for a transfer of the domain name to the Complainant.

Mr. Boswell replied by e-mail on January 18, 2005, of which the Panel has been provided with a copy, as follows:

“As I mentioned in my previous email, I have had several offers to purchase [the domain name] from potential competing companies at many times over my personal investment. Therefore, if my only intent was profit, I would have already sold the domain. I personally acquired the domain from my own e-commerce business over three years ago at the same time as I became an investor in EPTNF.”

[EPTNF is the symbol for the ‘pink sheet’ listing of EpiTan Limited on the New York Stock Exchange. EPTNY, the EpiTan sponsored level 1 American Depositary Receipt, was set up on July 1, 2004.]

The Respondent’s reply of January 18, 2005, is disingenuous - a more plausible explanation is that the Respondent is simply holding out for a higher offer.

Furthermore, the Respondent’s statement that his “goal was to support his own private investment in EpiTan Limited with the release of Epitan.com as a private forum message board for sharing individual experiences” lacks credibility, particularly in view of the fact that the domain name has been registered for several years without the message board having been established, coupled with the fact that the domain name has been advertised for sale at least 8 months prior to the date of this Complaint, if not longer.

In his e-mail of January 18, 2005, the Respondent offered to transfer the domain registration to the Complainant for US$17,000.00. This figure is grossly in excess of the out-of-pocket costs associated with registering the domain name, which would be likely to have been less than US$100.00. The Respondent purported to justify this amount on the basis that this covers personal expenses associated with the development of “the EPITAN.COM website that was created and hosted over three years back but never released to public viewing.” The Complainant suspects that no such website was created. However, even if a website had been developed (and, one were to accept the claim that the Respondent spent US$17,000 on its development) this in no way justifies the proposal to sell the domain name for US$17,000.

Until recent weeks prior to the filing of the Complaint, the Respondent had advertised the domain for sale at the website “www.epitan.com,” as evidenced by the corresponding print-out dated December 15, 2004, of which the Panel has been provided with a copy. This message no longer appears at this website and the domain name resolves to a blank screen. The Complainant suggests that the Respondent removed the for sale advertisement in order to resist a complaint under the Policy.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, 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 it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936. The failure by the Respondent to dispute the Complainant’s allegations allows the inference to be drawn by the Panel that they are true.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name in issue incorporates without any modification the trademark EPITAN, which is owned and commercially used and promoted by the Complainant in and for the purposes of its business. This, apart from anything else, is a clear misuse and infringement on the part of the Respondent of the Complainant’s trademark and also a breach of the Policy.

In view of this, the Panel finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark EPITAN in which the Complainant has well-established and valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name in issue.

In particular, no evidence has been adduced that the Respondent has been commonly known by the domain name; nor making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use Complainant’s trademark EPITAN as part of the domain name in issue.

Neither can the Respondent claim that he was unaware of the Complainant and its business activities (see below), nor its EPITAN trademark, which has been registered, in several countries, including the United States, and also in the neighboring country of Canada.

Furthermore, the adoption by the Respondent of a domain name identical to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s well-known and valuable trademarks. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s businesses and trademark and unfairly attracting to its own business and activities the Complainant’s goodwill in its mark, without any right or legal justification for doing so.

Thus, the Panel concludes that the Respondent has no rights to nor legitimate interests in the domain name in issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraphs 4(b)(i) and (iv) of the Policy are particularly relevant to the present case and respectively provide that there is evidence of bad faith in the following circumstances:

“(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name.

(ii) by using the domain name, the respondent 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 the respondent’s website or location or of a product or service on its website or location.”

It can be deduced from the e-mail correspondence exchanged between the Complainant and the Respondent (cited above) that the Respondent registered the domain name in issue with the main intention of “selling, renting, or otherwise transferring the domain name registration to the complainant” or, indeed, to anyone else, in return for valuable consideration - either in cash or in kind; in the present case, for stock options in the Complainant or “a lease option on the domain.”

The Panel agrees with the Complainant’s contention that the Respondent’s e-mail message of January 18, 2005 (also cited above) in which he claims that “if my only intent was profit, I would have already sold the domain” is “disingenuous”. Again, the rejection by the Respondent of the Complainant’s offer to pay the Respondent’s “reasonable expenses in registering the domain name, in exchange for a transfer of the domain name” provides corroboration on this point. Likewise, the Respondent’s statement in the same e-mail that his “goal was to support my private investment with the release of Epitan.com as a private forum message board for sharing individual experiences” also lacks credibility, given the fact the domain name was registered on March 18, 2002, and, to date, the message board has not been set up.

Also, the Respondent claims that the price of US$17,000 - far in excess of the costs of registering the domain name in issue - was justified on the ground that this sum would cover “personal expenses associated to the development of the EPITAN.COM website that was created and hosted over three years back but never released to public viewing.” But, again, there is no evidence of this website having been created and, even, if it had been, the associated costs do not appear to justify such a high figure for the sale of the domain name.

Furthermore, on December 15, 2004, prior to the filing of this Complaint, the Respondent was advertising on the website “www.epitan.com” that the domain name was for sale. This message no longer appears and the domain name resolves to a blank screen. The Panel agrees with the Complainant’s contention that the Respondent removed the advertisement in an attempt to avoid a complaint under the Policy. Again, this is further evidence of bad faith on the part of the Respondent.

Again, by registering and using the domain name in issue incorporating the Complainant’s trademark, EPITAN, the Respondent is misleading consumers and Internet users into thinking that it is in some way connected, sponsored or affiliated with the Complainant and its well known business, or the Respondent’s activities are approved or endorsed by the Complainant, which is not, in fact, the case. Indeed, the Respondent actually admits the existence of this confusion in the e-mail message of January 7, 2005 (cited above), where it is stated that the Respondent is “averaging about 8 inquiries per week from private individuals looking to purchase the domain and even a few confused customers wanting to purchase products (emphasis added).”

The Respondent is clearly trading on the Complainant’s goodwill and reputation, which the Complainant has built up by expending time and money over the years. This, without any explanations by the Respondent to the contrary, of which none are forthcoming on the website or otherwise, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 of January 18, 2001, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Also, the failure by the Respondent to answer the Complaint and participate in the present proceedings, is, in the view of the Panel, further evidence of bad faith on the part of the Respondent. If the Respondent had any justification for registering and using the domain name in issue in the first place, it is reasonable to expect that the Respondent would have taken this opportunity to put forward an answer in defense of these actions.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name in issue 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 <epitan.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: April 26, 2005