American trademark SCULPTRA n° 3056196 registered on January 31, 2006 in classes 5, 10 and 44,

Australian trademark SCULPTRA n° 987968 registered on September 27, 2004 in classes 5, 10 and 44,

French trademark SCULPTRA n° 03 3 257 464 registered on November 18, 2003 in classes 5, 10 and 44,

German trademark SCULPTRA n° 30406574 registered on March 8, 2004 in classes 5, 10 and 44,

Hong Kong trademark SCULPTRA n° 300154160 registered on February 6, 2004 in classes 5, 10 and 44,

Japanese trademark SCULPTRA n° 4770371 registered on May 14, 2004 inclasses 5, 10 and 44,

Swiss trademark SCULPTRA n° 520384 registered on April 22, 2004, in classes 5, 10 and 44 (Annex 11).

2. The Complainant is also the owner of the following domain names:

<sculptra.com>, registered on March 23, 2002,

<sculptra.net>, registered on June 10, 2003,

<sculptra.org>, registered on June 10, 2003,

<sculptra.us>, registered on April 8, 2004,

<sculptra.fr>, registered on January 30, 2007,

<sculptra.co.uk>, registered on April 2, 2004,

<sculptra.com.mx>, registered on April 6, 2004.

3. The contested domain name <sculptraexpert.net> misappropriates the Complainant’s trademark SCULPTRA.

4. The mark SCULPTRA is highly distinctive.

5. The Respondent’s domain name incorporates the Complainant’s mark in its entirety and thus is confusingly similar. The addition of the generic term “expert” following “sculptra” does little to avert confusion and may compound consumer confusion.

6. The Respondent does not have any rights or legitimate interest in the contested domain name.

7. The Complainant has never licensed or otherwise permitted the Respondent to use the mark SCULPTRA.

8. Respondent is a plastic surgeon who is undoubtedly aware of the mark SCULPTRA and the Complainant’s products.

9. The Respondent is attempting to benefit from the use of the Complainant’s mark and divert Internet users to a website belonging to the Respondent with links to commercial websites offering medical services or selling SCULPTRA products.

10. The Complainant sent the Respondent an email contesting the registration of the <sculptraexpert.net> domain name. The Respondent replied, “I will cancel the website.” However the domain name registration had neither been cancelled nor transferred to the Complainant during the five months prior to the institution of this proceeding.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, except to state by email, “I have already given up the domain name so it is no longer under my control.”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to the Complainant’s trademarks or service marks; and

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

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

Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Ward and Grabebootie Inc., WIPO Case No. D2003-0185.

A. Identical or Confusingly Similar

The addition of a generic word to a trademark will not avoid a determination that the contested domain name is confusingly similar. “The fact that a domain name wholly incorporates a Complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks.” Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the Complainant’s trademark with a domain name. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Limited, WIPO Case No. D2000-0275; Sociйtй Air France v. RBlue, WIPO Case No. D2005-0290. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.1.

Accordingly, the Panel determines that the contested domain name <sculptraexpert.net> is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

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

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

Respondent registered the domain name <sculptraexpert.net>, years after the use and registration of the SCULPTRA mark by Complainant. Moreover, the Respondent appears to have attempted to benefit commercially from the appropriation of the SCULPTRA mark in the domain name. “The Respondent’s use of the domain name to attract Internet users to his website and then redirect them to other websites, some of which offer for sale the Complainant’s direct competitors’ products, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy.” Sanofi-aventis v. Montanya Ltd., WIPO Case No. D2006-1079.

The Respondent has not attempted to demonstrate any rights or legitimate interest in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 4.6 (panel may draw negative inferences in absence of a response).

The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The Panel finds that the Respondent was aware of the Complainant’s trademark when he registered the domain name in dispute. Indeed, the use of the mark SCULPTRA, the name of a dermatological product, by a plastic surgeon indicates that domain name was chosen to trade Complainant’s good will. This finding leads to the firm conclusion that the domain name in dispute has been registered in bad faith. Additionally, the fact the domain name was used for commercial purposes and linked to various medial related products and services further supports the conclusion that domain was registered in bad faith. Sanofi-aventis and Aventis Pharma SA v. Advent Innovations, WIPO Case No. D2005-0377; Sanofi-aventis v. Montanya Ltd., WIPO Case No. D2006-1079.

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 <sculptraexpert.net> be transferred to the Complainant.

William F. Hamilton
Sole Panelist

Dated: January 25, 2008

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1727.html

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