The Complainant is Ideation Unlimited, Inc. of New York, United States of America, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
The Respondent is Dan Myers, of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <prescriptioncosmetics.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2008. On September 23, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name disputed. On September 23, 2008, GoDaddy.com, Inc. 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”), 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 on September 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 17, 2008.
In response to the Center's notification of the Respondent's default, the Respondent sent two emails to the Center on October 17 and 18, 2008, claiming that a response had been filed. These emails are discussed in section 4 below.
The Center appointed John Swinson as the sole panelist in this matter on October 28, 2008. 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. Response
The first email from the Respondent to the Center on October 18, 2008 stated:
“Please submit this as my reply. Prescriptions Cosmetics have been around as long as mankind. The domain is obviously generic. The Complainant has not proven bad faith. The Complainant is not famous.”
The second email sent on October 18, 2008 read (in reference to the Center's notification of Respondent's default): “I did respond. Please submit my response!”.
As a preliminary issue the Panel must determine whether or not the late Response should be considered.
Where a Response is submitted late, paragraph 14(a) of the Rules requires a Panel to proceed to make its decision based only on the Complaint unless the Panel considers that “exceptional circumstances” exist.
Also relevant is paragraph 10(b) of the Rules, which requires a Panel to treat the parties fairly and equally, and paragraph 10(c) and (d) of the Rules, which allows a Panel to extend time periods and to determine the admissibility, relevance and weight, etc. of evidence.
As mentioned above, the due date for the Response was October 16, 2008. The Respondent's email which contained the “Response” was one day late and was received before the Panel commenced its decision making process. It is also an extremely short response consisting of four bare statements without supporting evidence. On the other hand, the Respondent did not put forward any reasons as to why the Response was late.
After balancing these factors, the Panel determines that the Response will be taken into consideration, although obviously the lack of evidence contained in the Response will impact on the amount of weight the Response is given.
5. Factual Background
The Complainant is the owner of several trade marks for PRESCRIPTION COSMETICS (word and device) registered in the United Kingdom (UK001052440, UK001052441) and in the United States (Registration No. 1030447).
The Respondent is an individual residing in London, United Kingdom.
The disputed domain name was created on April 14, 2003.
The website operating from the disputed domain name offers links to third party websites under broad subject headings such as “beauty products”, “perfume”, “online pharmacy” and “skin care products”. There are also some unrelated links such as finance and travel related websites.
6. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
The Complainant began operations in 1973 under the name Prescription Cosmetics, Inc. The Complainant is controlled by Norman Orentreich MD, and owns Mr. Orentreich's intellectual property and other intangible assets.
Registered trade marks for PRESCRIPTION COSMETICS and PRESCRIPTION COSMETICS and design are used in connection with Mr. Orentreich's formulary skin care preparations. These marks have been registered in the United Kingdom where the Respondent is located since September 22, 1975 (United Kingdom Trademark Registrations no. UK001052440 and UK001052441), and the United States since January 20, 1976 (United States Registration No. 1030447).
Through its licensee, the Complainant has used the registered trade marks in the United States since as early as 1974 and internationally since as early as 1975 (long prior to the registration of the disputed domain name).
Products bearing the registered PRESCRIPTION COSMETICS trade mark and design are provided to customers in the United States, United Kingdom, France, Italy, China, Japan, Argentina, Brazil, Peru, Israel and Morocco. The marks have become recognised by the relevant public as indicating the source of non-medicated and medicated cosmetics of the Complainant.
The disputed domain name was registered on April 14, 2003. The registration is a breach of the Respondent's domain name agreement, as the Respondent was likely fully aware of the Complainant's rights in the trade marks at the time of registration.
From at least April 2008, the website operating from the disputed domain name directed Internet users to website links selling products provided by other cosmetic manufacturers. The goods are the same nature as the Complainant's goods, and therefore the parties' target customers overlap. In doing this, the Respondent is attempting to injure the goodwill and reputation attaching to the Complainant's trade marks.
The Complainant wrote to the Respondent on February 4, 2008 and this letter was returned for an unrecognised address. The Complainant tried to first address this matter by approaching the registrar GoDaddy.com, Inc., however GoDaddy.com, Inc. responded saying that the website was hosted elsewhere and it was unable to assist with issues concerning the content of the website.
The Respondent is not authorised or affiliated with the Complainant in any way, and has not been licensed to provide goods or services under the Complainant's trade marks. The Respondent has no legitimate interest in or legitimate bona fide business purpose for the disputed domain name. The Respondent has no trade mark rights or other legitimate rights in PRESCRIPTION COSMETICS.
The disputed domain name incorporates the Complainant's registered trade mark, and they are materially identical.
The website operating from the disputed domain name contains links to other cosmetic manufacturers not affiliated with the Respondent, which misappropriates the goodwill accumulated by the Complainant in its registered marks.
The Respondent registered the disputed domain name having no rights in PRESCRIPTION COSMETICS, without permission from the Complainant. The only use made of the disputed domain name has been to divert unsuspecting users who were seeking information on the Complainant and its products to a website which is completely unrelated to the Complainant.
The Respondent registered the disputed domain name in bad faith. This can be demonstrated from the false address submitted to the registrar, in violation of the domain name agreement.
The Respondent has prevented the Complainant from registering its trade mark as a domain name, depriving the Complainant of a valuable marketing tool for its services.
B. Respondent
The Respondent did not submit a formal Response. The content of the Respondent's informal response is set out in section 4 above.
7. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the following three elements (as set out in paragraph 4(a) of the Policy):
(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
A. Identical or Confusingly Similar
The first issue to determine is whether the Complainant has trade mark rights in PRESCRIPTION COSMETICS.
The Complainant does not appear to own any registered trade marks for the word mark “PRESCRIPTION COSMETICS”. However, the Complainant owns three registered “PRESCRIPTION COSMETICS and device” marks, in the United States and United Kingdom (UK001052440 and UK001052441 and United States Registration No. 1030447). All three of these marks have been filed for a significant period of time (filed since 1975).
The question of whether the disputed domain name is confusingly similar or identical to a device mark, is judged objectively, against the dominant textual elements of a complainant's mark, rather than graphic or stylized elements. (See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,
WIPO Case No. D2001-0031).
Ordinarily, this would mean that the disputed domain name should be compared to “PRESCRIPTION COSMETICS”, which comprise the dominant textual elements of the Complainant's marks.
However, that is not the appropriate path to take on the record in this particular case. That is because there is a disclaimer relating to the Complainant's United States trade mark, which states that the Complainant disclaims the words “Prescription Cosmetics” in the mark, without waiving any of its common law rights therein.
If the Complainant has willingly disclaimed any trade mark rights in the entire term “Prescription Cosmetics”, it cannot and should not claim to have trade mark rights in that term by virtue of its United States registration. (See for example J2 Global Communications, Inc. v. Ideas Plus, Inc.,WIPO Case No. D2005-0792). The Complaint did not explicitly draw attention to this issue, or provide reasons why it should be considered to have trademark rights in respect of a term that it has disclaimed.
There is also a disclaimer in relation to the two United Kingdom marks, which states that registration gives no right to the exclusive use of the word “prescription”. Again, the Complainant cannot claim to have registered trade mark rights in PRESCRIPTION COSMETICS by virtue of its United Kingdom marks, in circumstances where the word “prescription” has been disclaimed.
Of course, it is not necessary for the Complainant to establish registered trade mark rights - it would b sufficient for the purposes of these proceedings under the Policy for the Complainant to demonstrate common law trade mark rights in the term PRESCRIPTION COSMETICS. However in the Complaint, the Complainant relies heavily on the three device marks, and provides little evidence of common law rights or reputation.
In particular, the Complainant makes bare statements that products have been sold under the PRESCRIPTION COSMETICS mark since 1974 (sold internationally since 1975), and the marks are recognised by the public as indicating products of the Complainant. The Complainant provides no evidence of advertising it has undertaken using the mark, or the volume or value of sales achieved under the mark.
The Panel is unable to conclude on the provided record that the Complainant has common law rights in the term PRESCRIPTION COSMETICS, due to the lack of evidence demonstrating secondary meaning. (See Amsec Enterprises, L.C. v. Sharon McCall,WIPO Case No. D2001-0083).
The question remains as to whether the term “cosmetics” which the Complainant has not disclaimed in its United Kingdom registration, and the disputed domain name consisting of “prescription cosmetics”, are identical or confusingly similar.
The Panel must hold that they are not. “Cosmetics” is a generic word with a common meaning. There are many descriptive words (like prescription) which could be added to the term “cosmetics” to entirely change or narrow the meaning of that term. Importantly, the word “prescription” on its own is descriptive, and not the name of a brand (compare with the domain name <biothermcosmetics.com>, the subject of L'oreal, Biotherm, Lancôme Parfums Et Beauté & Cie v. Unaci, Inc,
WIPO Case No. D2005-0623). A Google search of “prescription cosmetics” produces many results in the descriptive sense, and none of the first ten results refer to the Complainant or its related entities.
The Panel finds that the Complainant has on the present record failed to satisfy the first element, and therefore it is not necessary to consider the remaining two elements.
8. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson Sole Panelist
Dated: November 12, 2008
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