Galderma S.A. v. Chairut Kompeerapun; Eric Kaiser

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Galderma S.A. v. Eric Kaiser, Chairut Kompeerapun

Case No. D2003-0495

1. The Parties

The Complainant is Galderma S.A. of Fort Worth, Texas, United States of America, represented by Cole Ramey of Crouch & Inabnett, L.L.P of Dallas, Texas, United States of America.

The Respondents are Eric Kaiser of Colorado Springs, Colorado, United States of America, and Chairut Kompeerapun of Pakpreaw, Muang, Thailand.

2. The Domain Names and Registrar

The disputed domain names <buydifferin.com> and <erythromycin-adapalene-differin-gel-cream-acne-medication.com> are registered with Stargate Communications.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2003. On June 24, 2003, the Center transmitted by email to Stargate Communications a request for registrar verification in connection with the domain names at issue. On June 27, 2003, Stargate Communications transmitted by email to the Center its verification response confirming that the Respondent, Eric Kaiser, is listed as the registrant. 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 Respondents of the Complaint, and the proceedings commenced on June 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2003. The Respondents did not submit any response. Accordingly, the Center notified the Respondents of default on July 25, 2003.

The Center appointed Sandra Franklin as the sole panelist in this matter on August 5, 2003. 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

Complainant is the owner of eighty-seven worldwide trademarks and twenty pending registrations for the mark DIFFERIN. DIFFERIN has been in commercial use since 1996, and the mark has become incontestable. Complainant also holds numerous United States and international marks for GALDERMA and Galderma’s corporate logo, under which Complainant manufactures, markets, distributes and promotes the topical acne cream DIFFERIN.

5. Parties’ Contentions

A. Complainant

Complainant makes the following assertions:

1. Respondents’ <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names are confusingly similar to Complainant’s marks.

2. Respondents do not have any rights or legitimate interests in the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names.

3. Respondents registered and used the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names in bad faith.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

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."

In view of Respondents’ failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant 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 Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondents have 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.

A. Identical or Confusingly Similar

Complainant has clearly established rights in the mark DIFFERIN by appending evidence of numerous registrations and pending registrations for the mark. Complainant has used DIFFERIN since 1996, and the mark has become incontestable. Respondents’ domain names incorporate Complainant’s mark DIFFERIN and merely add other descriptive words to it. One of the added words is ADAPALENE, the active ingredient in DIFFERIN, patented by Complainant. Respondents are not authorized by Complainant to use the mark in any way, yet Respondents’ website repeatedly displays both Complainant’s mark DIFFERIN and its corporate name GALDERMA. This creates a likelihood of confusion as well as a danger to Complainant that harmful products are being improperly sold under its marks.

It has

been held

in innumerable

previous

cases that

the addition

of non-distinctive

and descriptive

words to

a trademark

creates

confusion,

and particularly

where a

competitor

uses an

established

mark to

sell similar

or identical

goods. See,

for example,

Pfizer,

Inc. v.

Order Viagra

Online,

WIPO

Case No.

D2002-0366.

Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Respondents

did not

submit a

Response

to the Panel

in this

proceeding.

Since Respondents

have not

provided

any circumstances

showing

that they

had rights

or legitimate

interests

in the disputed

domain names,

the Panel

will accept

as true

all allegations

and inferences

as set forth

by Complainant

in the Complaint.

See G.D.

Searle &

Co. v. Martin

Marketing,

FA 118277,

National

Arbitration

Forum, October 1, 2002,

holding

that where

Complainant

has asserted

that Respondents

have no

rights or

legitimate

interests

with respect

to the domain

name, it

is incumbent

on Respondents

to come

forward

with concrete

evidence

rebutting

this assertion

because

this information

is "uniquely

within the

knowledge

and control

of the respondent";

see America

Online,

Inc. v.

AOL Internatinal,

WIPO

Case No.

D2000-0654,

finding

no rights

or legitimate

interests

where Respondents

fail to

respond.

The WHOIS contact information does not indicate that Respondents are commonly known by the <buydifferin.com> and <erythromycin-adalpene-differin-gel-cream-acne-medication.com> domain names. The disputed domain names are very similar to Complainant’s web site "www.differin.com" and employ Complainant’s trademark DIFFERIN. Thus, the Panel finds that Policy paragraph 4(c)(ii) does not apply to Respondents. See Tercent Inc. v. Lee Yi, FA 139720, National Arbitration Forum, February 10, 2003, stating "nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name" as one factor in determining that Policy paragraph 4(c)(ii) does not apply; see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718, National Arbitration Forum, February 6, 2003; "Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy paragraph 4(c)(ii) does not apply to Respondent."

Respondents

are not

using the

disputed

domain name

in connection

with a bona

fide offering

of goods

or services

or for a

legitimate

noncommercial

or fair

use. In

fact, Respondents

are purposely

capitalizing

on the trade

value of

Complainant’s

well-established

and heavily

marketed

trademarks

to sell

competing

goods, the

antithesis

of bona

fide use.

See Peter

Frampton

v. Frampton

Enterprises,

Inc.,

WIPO

Case No.

D2002-0141,

which held

that the

use of a

domain name

which incorporates

a registered

mark in

order to

sell products

in the same

class as

mark holder

inherently

and intentionally

seeks to

exploit

user confusion,

and therefore

cannot constitute

bona fide

use. The

Panel finds

that Policy

paragraph

4(c)(i)

and Policy

paragraph

(4)(c)(iii)

do not apply

to Respondents.

For the foregoing reasons, the Panel finds that Policy paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

This Panel

finds that

Respondents

have registered

and used

the <buydifferin.com>

and <erythromycin-adalpene-differin-gel-cream-acne-medication.com>

domain names

primarily

for the

purpose

of disrupting

Complainant’s

business,

indeed by

directly

competing

with Complainant

by selling

or attempting

to sell

products

patented

and trademarked

by Complainant.

In response

to a cease

and desist

request

from Complainant,

Respondents

had previously

agreed to

stop using

domain names

incorporating

Complainant’s

mark DIFFERIN.

It is evidence

of bad faith

that one

of the Respondents

then re-registered

the domain

name <buydifferin.com>

and promptly

sold it

to a third

party, allegedly

in Thailand,

also a Respondent

herein.

Such use

has routinely

been held

to demonstrate

bad faith.

See Bartercard

Ltd &

Bartercard

International

Pty Ltd.

v. Ashton-Hall

Computer

Services,

WIPO

Case No.

D2000-0177;

Freedom

Flag, Inc.,

dba Falls

Flag &

Banner Co.

v. Flags

Unlimited,

WIPO

Case No.

D2002-0478.

Respondents

also maintain

dozens of

similar

domain names

and/or websites

that contain

the trademarks

of others.

Such a pattern

has also

routinely

been held

as evidence

of bad faith.

See, for

example,

Lancôme

Parfums

et Beauté

& Cie

v. SL, Blancel

Web, WIPO

Case No.

D2001-0028.

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been satisfied.

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 <buydifferin.com> and <erythromycin-

adalpene-differin-gel-cream-acne-medication.com> domain names be transferred to Complainant.

Sandra Franklin

Sole Panelist

Dated: August 11, 2003

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