skindoctor.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dr. Mitchell Mandel and Ms. Jill Slater v. CSC Laboratories, Inc.

Case No. D2006-0719

1. The Parties

The Complainants are Dr. Mitchell Mandel and Ms. Jill Slater, Westbury, New York, United States of America, represented by Michael Best & Friedrich, LLP, United States of America.

The Respondent is CSC Laboratories, Inc., Hewlett, New York, United States of America, represented by Robert M. Schwartz, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <skindoctor.com>, is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2006. On June 9, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On June 13 and 19, 2006, Network Solutions, LLC transmitted by email to the Center its verification responses 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 June 20, 2006. The Center set July 10, 2006, as the last day for the submission of a Response. However, by subsequent stipulation of the parties, the last day for the submission of the Response was extended to August 3, 2006. The Response was filed with the Center on August 3, 2006.

In a letter dated August 10, 2006, Complainant’s counsel requested leave to file a reply brief to respond to what was labeled as the “novel and unanticipated arguments and statements of fact raised by Respondent in its Response”.

The Center appointed Jeffrey M. Samuels, David Maher and Frederick M. Abbott as panelists in this matter on September 1, 2006. The Panel finds that it was properly constituted. Each member of 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.

In a letter dated September 5, 2006, Respondent’s counsel objected to any supplemental filing. On September 6, 2006, Complainant’s counsel submitted to the Case Manager a proposed supplemental filing.

In its Administrative Order No. 1, dated September 9, 2006, the Panel granted Complainant’s request to file a reply brief and provided Respondent an opportunity to respond to the arguments and factual assertions set forth therein. In a letter dated September 21, 2006, Respondent’s counsel responded to Complainant’s supplemental filings.

4. Factual Background

Complainant Dr. Mitchell Mandel and his sister, Jill Slater, are the joint owners of the trademark SKIN DOCTOR, as used on skin and hair lotions, cleansers, moisturizers, shampoos and conditioners. Complainant and his sister filed an application with the United States Patent and Trademark Office (USPTO) to register the mark SKIN DOCTOR on August 23, 1993, and a registration (No. 1,895,528) issued on May 23, 1995. See Complaint, Annex C. According to the registration certificate, the date of first use of the SKIN DOCTOR mark was November 21, 1994. The registration has become incontestable.

According to the Complaint, the domain name <skindoctor.com> was first registered by Surge Electronic Media, Inc. on March 7, 1996. On information and belief, Complainant alleged that Surge Electronic Media was an agent of Respondent. The domain name in dispute, <skindoctor.com>, was later registered by Respondent on September 30, 2003.¹

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is identical or confusingly similar to its SKIN DOCTOR mark, which, as noted above, is the subject of a U.S. trademark registration.

Complainant further asserts that Respondent has no rights or legitimate interests in respect of the domain name. According to Complainant, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent, Complainant points out, is using <skindoctor.com> in connection with an online store featuring skin lotions, cleansers, moisturizers, conditioners, and other skin care products – products which are either identical or closely related to those sold by Complainant under the SKIN DOCTOR mark.

Complainant contends that, pursuant to the constructive notice provision of U.S. trademark law, 15 U.S.C. §1072, Respondent was on notice of Complainant’s ownership of the SKIN DOCTOR mark as of May 23, 1995, which is prior to Respondent’s registration and use of the <skindoctor.com> domain name. “Accordingly,” Complainant argues, “Respondent was deemed to be aware of Complainant’s rights in his SKIN DOCTOR mark prior to Respondent’s registration and use of <skindoctor.com>.”

There can be no dispute, Complainant alleges, that Respondent’s use of the disputed domain name is purely commercial. Respondent’s website touts “Skin Care Products” and invites users to “[b]rowse the web store by clicking the above links or click below to purchase one of our most popular products.” See Complaint, Annex I.

Complainant further maintains that Respondent is not making a fair use of the SKIN DOCTOR mark. According to Complainant, Respondent is not using the <skindoctor.com> domain name to feature information relating to dermatology or “skin doctors.” Rather, the domain name is used as an address at which consumers can purchase products which are identical or closely related to products sold by Complainant under the SKIN DOCTOR mark.

Complainant also argues that Respondent’s use of the disputed domain name is not in conjunction with a bona fide offering of goods or services and, on information and belief, alleges that Respondent is not commonly known by the disputed domain name.

With respect to the issue of “bad faith” registration and use, Complainant maintains that, through Respondent’s use of the <skindoctor.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant contends that there is a presumption of bad faith when a respondent should have been aware of a complainant’s marks, actually or constructively, and, in the instant case, Respondent had constructive notice of Complainant’s trademark rights at the time the disputed domain name was registered.

B. Respondent

Respondent, in its Response, contends that whether the domain name is identical or confusingly similar to Complainant’s SKIN DOCTOR mark is irrelevant because: (1) Complainant failed to join his sister, Jill Slater, a co-owner of the SKIN DOCTOR mark; (2) the proceeding is barred under the doctrine of laches; (3) Respondent has superior rights to use of the mark because its use predates Complainant’s use; (4) Complainant’s mark is generic and, thus, not subject to trademark protection.

Respondent argues that without joining his sister as a complainant in this proceeding, Dr. Mandel failed to join a necessary party and, therefore, the relief sought must be denied. According to Respondent, a nonparty is a “necessary party” when the nonparty’s interest is such that she will gain or lose by direct operation of the determination to be rendered. Further, Respondent adds, a party is “necessary” when, without her, complete relief cannot be granted, or the absent party has an interest in the disposition of the proceeding. Here, Respondent asserts, the panel’s transfer of the domain name to Complainant would affect the co-owner’s interest. Likewise, the denial of transfer could subject Respondent to a subsequent proceeding by the co-owner, Ms. Slater. Thus, without the joinder of Ms. Slater, complete relief cannot be granted.

With respect to its laches argument, Respondent notes that under U.S. trademark law, equitable defenses, including laches, may be asserted as a defense to an action involving a mark that is the subject of an incontestable registration. Respondent indicates that some UDRP panels have considered a laches defense, especially where, as here, the parties are U.S. persons or entities. Respondent maintains that laches may be successfully invoked in this case, given that Respondent registered the domain name on March 7, 1996, and Respondent has been continuously using the domain name during the over a ten-year period since that date. Respondent further notes that, in early 2000, Complainant sent a “cease and desist” letter to Respondent. By this time, Respondent had invested considerable money into the development of its site and the marketing of the goods sold at such site. According to Respondent, sometime in early 2000, Complainant offered to purchase the domain name from Respondent, but such offer was rejected. Respondent argues that during the six-year period after the rejection of Complainant’s purchase order, Respondent has continued to invest money and time into the development and maintenance of its website. Respondent asserts that at no time during this six-year period did Complainant take any further steps against Respondent to protect its mark.

Respondent also alleges that its date of first use predates Complainant’s date of first use of the SKIN DOCTOR mark. The Response indicates that Donald B. Feinsod, M.D., Respondent’s principal and sole shareholder, has been known as the “Skin Doctor” since 1975, when he began his dermatology practice in Long Island, New York. Respondent further alleges that Dr. Feinsod developed, used, and sold a variety of skin care products to his patients and others at least as early as January 28, 1991. According to Respondent, “[d]uring the almost 20 years of Dr. Feinsod’s continuous use of the term “The Skin Doctor”, he was not aware of the Complainant’s [trademark] application, registration, or use of the mark. When the Respondent registered the domain name <skindoctor.com> on March 7, 1996, it was done with no actual knowledge of the Complainant’s application and registration of the mark and was a natural extension of the over 20 year use of the term “The Skin Doctor” and of Dr. Feinsod’s medical practice, and the services and products he provides”.

Respondent also argues that Complainant does not have rights in the SKIN DOCTOR mark because such term is generic. Respondent refers to a dictionary definition, the results of a GOOGLE® search, and newspaper articles to support the argument that the term “skin doctor” describes a dermatologist and the goods and services provided by dermatologists and, thus, is generic.

Even if SKIN DOCTOR is a protectable mark, Respondent asserts, Respondent is using the term in its generic sense. Respondent reiterates that Dr. Feinsod is a skin doctor and that skin care products are available through the “www.skindoctor.com” site.

Respondent contends that it has rights or legitimate interests in the disputed domain name. More specifically, it alleges that before notice of the dispute, Respondent used the domain name in connection with the bona fide offering of goods. In this regard, Respondent maintains that Dr. Feinsod began selling skin care products on the Internet in 1995 and registered the domain name <skindoctor.com> on March 7, 1996. At such time, Respondent declares, Dr. Feinsod had no knowledge of Complainant’ registration and use of SKIN DOCTOR and did not have such knowledge until the receipt of the “cease and desist” letter. Respondent argues that Complainant may not rely on the constructive notice provision of U.S. trademark law for purposes of establishing “notice of the dispute.”

Respondent also indicates that Dr. Feinsod has been commonly known by the domain name since 1975.

Finally, Respondent contends that none of the circumstances set forth in the Policy with respect to the issue of “bad faith” registration and use is applicable. According to Respondent, Complainant has presented no evidence that Respondent registered the disputed domain name for any purpose other than to advance Respondent’s legitimate business activities. Respondent asserts that it registered the domain name in 1996 as an extension of Dr. Feinsod’s dermatological medical practice, that Respondent never had an intention to sell the domain name to Complainant (and indeed refused Complainant’s offer to purchase the domain name), that there is no evidence that the domain name was registered primarily for the purpose of disrupting the Complainant’s business, and that Complainant has not presented sufficient evidence that Respondent is using the domain name as an intentional (underlining in original) attempt to attract Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. With respect to the last point, Respondent contends that even if a consumer entered the “www.skindoctor.com” site to find and locate Complainant’s products, it would quickly become apparent that none of Complainant’s products were for sale and that even if there is a likelihood of confusion, Complainant has not established that Respondent’s registration of the domain name was done intentionally to confuse consumers as to the source and/or affiliation with Complainant. “On the contrary, Respondent’s registration of the generic domain name <skindoctor.com> was a natural outgrowth of Dr. Feinsod’s medical practice and years of selling dermatology products to his patients.”

Respondent also maintains that, under the facts of this case, the requisite “bad faith” cannot be established by reference to the constructive notice provision of U.S. trademark law. “[W]hen the evidence establishes a plausible reason for the Respondent’s registration and use of the domain name, constructive notice alone is insufficient.”

C. Complainant’s Supplemental Filing

In his Supplemental Filing of September 6, 2006, Complainant attached an affidavit from Complainant’s sister and co-owner of U.S. Registration No. 1,895,528, Ms. Jill Slater. In her affidavit, Ms. Slater stated that she has granted Dr. Mandel “exclusive authority” to file the instant complaint seeking transfer of the domain name <skindoctor.com> to Dr. Mandel in his own name and agreed, if the Panel deems it necessary, to join Dr. Mandel as a complainant in the instant action. Complainant further asserted that laches is not an appropriate defense in a UDRP proceeding.

D. Respondent’s Response to Supplemental Filing

In its Response to the Supplemental Filing, Respondent submitted that Ms. Slater’s affidavit does not cure the problems associated with transferring the domain name to only of the owners of the involved mark (in the event Complainant prevails) or with protecting Respondent against the filing of a subsequent UDRP proceeding by Ms. Slater alone (in the event Respondent prevails). Respondent also contended that laches is an appropriate defense under the Policy, especially when the parties are residents of the U.S.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel determines that the disputed domain name, <skindoctor.com>, is, for all intents and purposes, identical to the registered mark SKIN DOCTOR. The addition of the top-level domain “.com” is of no legal significance given the generic or descriptive nature of such term.

The Panel next turns to the question of whether Complainant has rights in the mark SKIN DOCTOR. The arguments advanced by the parties clearly demonstrate that the mark and registration are owned by Complainant Dr. Mandel and his sister, Jill Slater. As noted above, in her affidavit submitted with Complainant’s Supplemental Filing, Ms. Slater agreed, if the Panel deemed it necessary, to join Dr. Mandel as a complainant.

The Panel determines that Ms. Slater is joined as a Complainant to this action and accordingly orders that the Complaint and all other submissions be amended to indicate that Jill Slater is a co-Complainant. Unless Ms. Slater is added as a complainant, a ruling by this Panel in favor of Respondent would not necessarily preclude Ms. Slater from pursuing another UDRP complaint against Respondent.²

Given Ms. Slater’s consent to being added as a co-Complainant to this action and the Panel’s determination to add her as such, the Panel concludes that the Complainants, Dr. Mandel and Jill Slater, have rights in the SKIN DOCTOR mark. Such rights are manifested through the use of, and registration covering, such mark.

The Panel rejects Respondent’s assertion that SKIN DOCTOR is generic. While such term is found in “thefreedictionary.com” (see Annex F to Response), is the subject of over 100,000 “hits” on GOOGLE® (see Annex G to Response), and was included as part of the headline of an article that was published July 8, 2006 in the “St. Petersburg Times” (see Annex H to Response), it is axiomatic that a determination of whether a term is generic must be made in the context of the goods and/or services on or in connection with which it is used. In this case, the mark SKIN DOCTOR is registered for use in connection with “skin and hair lotions, cleansers, moisturizers, shampoos and conditioners.” There is no evidence that the primary significance of the term SKIN DOCTOR is to identify any of these products. See 15 U.S.C. §1064. (“The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.”) Moreover, the issuance of a registration by the USPTO gives rise to a presumption that the registered mark is valid, i.e., is not generic. See 15 U.S.C. §1057(b).

B. Rights or Legitimate Interests

The Panel concludes that the evidence establishes that Respondent has rights or legitimate interests in the domain name.

The evidence establishes that Dr. Feinsod, the principal and sole shareholder of Respondent, began selling skin products on the Internet in 1995 and registered the disputed domain name on March 7, 1996. This is long prior to the commencement of the instant proceeding. The declaration of Dr. Feinsod (see Annex B to Response) indicates that he was unaware of Dr. Mandel’s use of the mark SKIN DOCTOR until early 2000. Thus, Dr. Feinsod’s use of the domain name may be considered bonafide.

Complainant’s assertion that, pursuant to the constructive notice provision of U.S. trademark law, Respondent should be charged with notice of Complainant’s rights in the SKIN DOCTOR mark as of its date of registration, i.e., May 23, 1995, is rejected by the Panel. While some panels have relied upon the doctrine of constructive notice in UDRP proceedings, most panels have declined to do so. While actual knowledge may sometimes be assumed in cases where the mark in issue is particularly strong and heavily advertised or promoted, no such evidence has been presented here. See, e.g.,Alberto-Culver Company. v. Pritpal Singh Channa, WIPOCase No. D2002-0757.

The eBaycase relied upon by Complainant in support of application of constructive notice (eBay Inc. v. SGR Enterprises, and Joyce Ayers, WIPO Case No. D2001-0259) is distinguishable from the instant case in that the panel in that case noted eBay’s prominence on the Internet. The other case cited by Complainant, CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148, involved a situation where the respondent filed no response and the panel in that case engaged in no independent analysis of the applicability of constructive notice in ICANN cases.³

C. Registered and Used in Bad Faith

The Panel further concludes that the disputed name was not registered and is not being used in bad faith. As noted above, the evidence indicates that at the time the domain name was registered, Respondent did not know that Dr. Mandel had applied to register the mark SKIN DOCTOR or had used the mark. That being the case, and there being no evidence that the SKIN DOCTOR mark was heavily promoted or advertised, the Panel cannot conclude that Respondent intentionallyattempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source of the products sold at such site or of the site’s source. In this regard, the Panel reiterates that Complainant may not in the circumstances of this case rely on constructive notice to ascribe the necessary intent to establish bad faith registration and use. (See, e.g,Alberto Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757.)

7. Decision

For all the foregoing reasons, the Complaint is denied.⁴

Dated: October 6, 2006

¹ The parties have argued this case based on the assumption that Respondent may be considered to have registered the domain name on March 7, 1996. The Panel will base its decision on this assumption.

² The UDRP does not expressly address the circumstances under which the same complainant is precluded from initiating a subsequent complaint against the same respondent with respect to substantially identical subject matter. This matter has, however, been addressed in a number of administrative panel decisions (see, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490; Maruti Udyog Ltd .v. maruti.com; WIPO Case No. D2003-0073; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527and Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2006-0596).

.³ Respondent argues that he was and is commonly known as the “The Skin Doctor.” The Response includes a declaration from Dr. Stephen Marcus indicating that he has known Donald B. Feinsod as “The Skin Doctor” for approximately the last 25 years (see Annex C to Response); from Bradley Jacobson, a pharmacist, indicating that “I and others refer to Dr. Feinsod as `The Skin Doctor’ and I have referred to Dr. Feinsod as `The Skin Doctor’ since approximately 1980” (see Annex D to Complaint); and from Andrew Fried (see Annex E to Response) in which he indicated that he has known Dr. Feinsod since 1987 and “[f]or as long as I have known Dr. Feinsod, he has been referred to as `The Skin Doctor’ by me, other patients, and anyone who knows him.” The evidence submitted by Respondent might best support a determination that the term “skin doctor” is generic for a class of medical practitioners. This evidence might support a determination that Respondent is making “fair use” of the domain name. However, Respondent is using the term in connection with a website promoting skincare products (sold under a different term than “skin doctor”) and, thus, outside its specific generic meaning. In this context, this does not establish “fair use.”

⁴ In view thereof, the Panel declines to rule on Respondent’s assertion that the proceeding is barred by laches.