Obagi Medical Products, Inc., a/k/a OMP, Inc. A Division of Valeant Pharmaceuticals North America LLC v. Charles Pearson
Claim Number: FA1703001720002
Complainant is Obagi Medical Products, Inc., a/k/a OMP, Inc. A Division of Valeant Pharmaceuticals North America LLC (“Complainant”), represented by Kathryn E. Smith of Wood Herron & Evans LLP, Ohio, USA. Respondent is Charles Pearson (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <obaji.com>, registered with GoDaddy.com, LLC.
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.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2017; the Forum received payment on March 3, 2017.
On March 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <obaji.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 6, 2017, the Forum sent a Deficiency Letter to Complainant requiring Complainant to "[a]mend the Complaint to consistently list the name/contact information of Complainant in the caption/header, and what you have listed in Section 2." Complainant addressed this deficiency on the same day in its Amended Complaint.
On March 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2017 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@obaji.com. Also on March 7, 2017, 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.
A timely Response was received and determined to be complete on March 27, 2017.
On April 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant considers the disputed domain name <obaji.com> to be confusingly similar to the Complainant’s OBAGI mark as the domain appears to be a mere typosquatting variation of Complainant’s mark through substituting the letter "g" for the letter "j".
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent is not commonly known by "obaji", there is no connection between the domain name and Respondent, and Complainant has not authorized, licensed, or endorsed Respondent’s use of the OBAGI mark in any form. Complainant further contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain name resolves to an eBay webpage offering the disputed domain name for auction for anywhere between $231,500.00 to $499,000.00.
In Complainant’s view, Respondent has registered and is using the disputed domain name in bad faith. Complainant considers that Respondent has registered the disputed domain name solely for the purpose of auctioning it to the highest bidder for an excessive price. Complainant further provides that Respondent clearly had Complainant in mind as a potential buyer for the disputed domain name, as Respondent has indicated this on his eBay auction webpage. Consequently, according to Complainant, Respondent had actual knowledge of Complainant’s rights in the OBAGI mark at the time of registration. Complainant indicates that Respondent justifies the asserted value of the disputed domain name on the eBay auction webpage by referring to Complainant's business and by stating that the domain name is a misspelling of Complainant's OBAGI mark, resulting in hits from customers who misspell the domain name. Finally, Complainant asserts further bad faith use by Respondent by providing that an email stating "Send a fucking email to customerservice@obagi.com" is automatically sent to users attempting to contact Respondent through the website linked to disputed domain name.
B. Respondent
In the Response of March 27, 2017, Respondent has put forward that the disputed domain name is not confusingly similar to Complainant's trademark as a substitution of the letter 'G' with the letter 'J' in Complainant's OBAGI trademark would be no common or obvious misspelling for Internet users, as these letters would only be similar in the Arabic language, which, according to Respondent, is not applicable to the current proceedings. Additionally, Internet users would be unlikely to substitute both letters accidently as the letters 'G' and 'J' are separated by the letter 'H' on a common keyboard. Respondent also provides that the terms 'obaji' and 'obagi' have different meanings as last names.
Respondent states that he does have rights and legitimate interests in the disputed domain name. Respondent puts forward that he has acquired the disputed domain name 17 years ago at the request of Complainant. Respondent further asserts that he has made a continuous legitimate fair use of the domain by redirecting users to Complainant's actual website and that the recent attempt of auctioning off the domain is the result of high purchase and maintenance costs attached to the disputed domain name which Respondent accordingly wants to recover.
Finally, according to Respondent, the disputed domain name was not registered and is not being used in bad faith. Respondent claims that he had no intention of selling or renting the disputed domain name at the time of registration. According to Respondent, this follows from the fact that he made a legitimate bona fide use of the domain for several years, such as redirecting traffic to Complainant's actual website. Respondent provides that he only recently put the domain name up for auction on an eBay auction webpage, and that this redirection to an auctioning page clearly establishes a distinction with Complainant's OBAGI mark, eliminating consumer confusion. Respondent further contends that his registration of the disputed domain name was known and approved by Complainant. Finally, Respondent accuses Complainant of intentionally sending significant amounts of e-mails to the address connected to the disputed domain name, which his automated response was a reaction to.
Complainant, Obagi Medical Products, is a division of Valeant Pharmaceuticals North America LLC, and is a company which engages in the production and sale of pharmaceuticals under the mark. Complainant’s products generally relate to skin care products. In connection with this business Complainant uses and has rights in the OBAGI mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,203,028, registered Nov. 10, 1998). Complainant also claims to have registered the mark with numerous other governmental agencies around the world.
The disputed domain name was created on August 1, 2000.
Respondent’s domain name redirects to an eBay auction webpage, which recently listed the domain name for sale for a price of $231,500.00.
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.
Complainant shows to have rights in the OBAGI mark through registration of the mark with the USPTO (e.g., Reg. No. 2,203,028, registered Nov. 10, 1998). See Compl., at Attached Annex 5. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s domain name <obaji.com> is confusingly similar to the OBAGI mark. The disputed domain name differs from the OBAGI mark through substituting the letter "g" for the letter "j", and adding the gTLD “.com.” Previous Panels have held that substituting a single letter does not sufficiently distinguish a domain name from a mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Belkin Components v. Gallant, FA 97075 (Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The finding of confusing similarity is further strengthened by the fact that the replacement of the letter "g" in Complainant's OBAGI mark with the letter "j" creates a domain name that is phonetically alike. SeeVivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Forum Oct. 31, 2003) (finding that Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark).
Panels have also consistently found the presence of the gTLD “.com” is not relevant to an analysis of confusing similarity. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). In view of the above, this Panel finds that Respondent’s domain name is confusingly similar to the OBAGI mark for purposes of 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that because Respondent is not commonly known as “obaji” there is no connection between the domain name and Respondent, and Complainant has not authorized, licensed, or endorsed Respondent’s use of the "OBAGI" mark in any form. WHOIS information associated with the disputed domain name identifies Respondent as, “Charles Pearson", which does not appear to resemble the disputed domain name. See Compl., at Attached Annex 2. Previous panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of authorization or licensing arrangement from a complainant. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). For these reasons, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name redirects to an eBay auction webpage offering the disputed domain name for sale/auction for amounts varying from $150,000.00, $231,500.00 to even $499,000.00. See Compl., at Attached Annexes 7–8. In advertising the domain name for auction, Respondent not only referred to Complainant's business to justify the asserted value of the domain name, but also listed Complainant as a potential buyer of the disputed domain name. See Compl., at Attached Annex 8. Prior panels have concluded that using a disputed domain name to resolve to a website explicitly offering it for sale indicates that respondent has no rights or legitimate interests in that domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Respondent argues that it has put the disputed domain name up for sale/auction only to recover substantial costs for acquiring and maintaining the disputed domain name. However, Respondent provides no evidence to substantiate the claims made in relation to the initial acquisition and related costs. In addition, the disproportionate selling price and the indication on the eBay auction webpage itself that Respondent is solely auctioning/selling the domain name for a substantial profit based on the potential value the domain name could have to Complainant, directly contradicts Respondent’s arguments. See Compl., at Attached Annex 8.
There can be no bona fide offering of goods or services under Policy ¶ 4(c)(i) when the domain name itself is being offered for sale. This is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). As Respondent fails to provide evidence to justify such use, the Panel finds that Respondent does not show any right or legitimate interests in the disputed domain name.
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. These factors are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant asserts that Respondent had knowledge of Complainant’s rights in the mark at the time of registration and thus registered and used the domain name in bad faith. Complainant contends that by referring to Complainant's business and by explicitly stating Complainant as a potential buyer of the domain name, Respondent must have had knowledge of Complainant's OBAGI mark at the time of registration. See Compl., at Attached Annexes 7–8. In addition, in light of the similarity between the domain name and the OBAGI mark, Respondent could not have registered the <obaji.com> domain name without actual knowledge of Complainant's rights in the mark. Respondent does not contest having knowledge of Complainant's mark at the time of registration of the disputed domain name, but argues it registered the domain name in good faith. Respondent claims Complainant knew and approved of Respondent's registration of the disputed domain name. However, as Respondent solely bases himself on a previous redirection of the disputed domain name to Complainant's legitimate website, Respondent fails to provide effective evidence to substantiate this claim. The Panel finds, on the balance of probabilities, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Regarding the bad faith use of the disputed domain name, it is clear that by redirecting to an eBay auction webpage offering to sell/auction the disputed domain for prices ranging from $231,500.00 to $499,000.00, Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant, or its competitors, for consideration in excess of the out-of-pocket costs related to the domain name. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
The fact that Respondent alleges to help Complainant's business, instead of disrupting it or competing with it, by indicating that it previously used the disputed domain name to resolve to Complainant's own website is contradicted by the responses Respondent provides to e-mails sent by Internet users who mistakenly thought were contacting Complainant. Such automated responses stating “Send a fucking email to customerservice@obagi.com" cannot be regarded as intending to help complainant business. Additionally, these responses indicate that Respondent was aware of Complainant's OBAGI mark.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <obaji.com> domain name be TRANSFERRED from Respondent to Complainant
Flip Jan Claude Petillion, Panelist
Dated: April 25, 2017
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