Westmore · UDRP DecisionDrcilabo.com
The Panel ordered transfer of <drcilabo.com>. It found the domain confusingly similar to the Complainant’s DR.CI:LABO trademark because it reproduced the mark substantially in full while omitting punctuation. The Respondent’s default left the Complainant’s prima facie case on rights or legitimate interests unrebutted. Bad faith was found based on the distinctive, pre-existing trademark, the timing and composition of the registration, and evidence that the domain was offered for USD 25,000 before resolving to a registrar holding page.
The timeline behind drcilabo.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind drcilabo.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates that removing punctuation from a trademark will not avoid confusing similarity when the recognizable textual components remain intact. It also shows the combined weight of substantially exact trademark targeting, significantly earlier registrations, a five-figure sale demand, and an unrebutted prima facie case.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Johnson & Johnson Pte. Ltd. v. Gao Yang Case No. D2018-1278 1. The Parties The Complainant is Johnson & Johnson Pte. Ltd. of Singapore, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“United States”). The Respondent is Gao Yang of Shanghai, China. 2. The Domain Name and Registrar The disputed domain name <drcilabo.com> is registered with DropCatch.com 1352 LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2018. On June 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2018. The Center appointed Nayiri Boghossian as the sole panelist in this matter on July 19, 2018. 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 owns United States trademark registrations nos. 3,056,198 and 2,973,385 registered in 2006 and 2005 respectively for the trademark DR.CI:LABO. The Complainant owns a number of Chinese trademark registrations. The Complainant has registered a number of domain names including the term “ci-labo”. The Complainant also uses the trademark DR.CI:LABO on social media pages as means of providing information to consumers. The Respondent registered the disputed domain name on December 14, 2017. According to the evidence provided by the Complainant, the disputed domain name resolved to a web page where the disputed domain name was offered for sale and later resolved to a holding page provided by the Registrar. 5. Parties’ Contentions A. Complainant The Complainant contends that it owns the trademark DR.CI:LABO outside Japan. It acquired the trademark from its predecessor in interest and has made it a leading brand in the world of medical cosmetic. The Complainant owns Unites States trademark registrations for the trademark DR.CI:LABO as well as registrations elsewhere. The Complainant is part of the Johnson & Johnson group, which is a leader in consumer health. The disputed domain name is identical or confusingly similar to the Complainant’s trademark as it incorporates the trademark in its entirety. It simply omits a punctuation mark. The Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant never authorized the Respondent to use its trademark nor is it affiliated with it. The registration of the domain name came years after the use of the Complainant of its trademark. Therefore, the burden is on the Respondent to show it has any rights or legitimate interest in the disputed domain name. The Respondent was never known by the domain name. The aim of registering the domain name was financial gain as the domain name is offered for sale. The Complainant states that when it wrote to the Respondent to inquire about purchasing the disputed domain name, the Respondent replied by email from support@choumi.com on March 15, 2018 that the disputed domain name “is for sale, fixprice 25,000usd, looking for your reply. Jack. ” Annex M of the Complaint. The Respondent registered and is using the domain name in bad faith. The Respondent is seeking to create an impression of association with the Complainant. The goal is to attract Internet traffic to its website by confusing the consumers. The Respondent is using the disputed domain name in bad faith as it offers it for sale. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant owns a number of trademark registrations for the trademark DR.CI:LABO registered in the United States and China. The Panel is satisfied that the Complainant has established its ownership of the trademark DR.CI:LABO. The trademark DR.CI:LABO has been used practically in its entirety in the disputed domain name. Prior UDRP panels have decided that the use of a trademark in its entirety (or a dominant feature of the trademark) as part of a domain name is sufficient to establish confusing similarity. It is irrelevant that the punctuation marks have been dropped as they do not alter the overall appearance or the impression the word “drcilabo” leaves on an Internet user. The generic Top-Level Domain (“gTLD”) should typically be ignored when assessing confusing similarity as established in prior decisions. Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name. The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith It is the Panel’s view that the Respondent has registered the disputed domain name and is using it in bad faith. The Respondent must have been aware of the Complainant’s trademark which was registered in 2005 while the disputed domain name was registered in 2017, particularly when the trademark of the Complainant is not a generic term. There is no reason why the Respondent would have chosen the Complainant’s trademark other than for the purpose of creating confusion. According to the evidence provided by the Complainant, the Respondent has offered the domain name for sale for a price that is considerably higher than its out-of-pocket expenses. At a later stage, the disputed domain name resolved to a holding page provided by the Registrar. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <drcilabo.com> be transferred to the Complainant. Nayiri Boghossian Sole Panelist Date: July 23, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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