WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cosmetic Research Group v. John Miller

Case No. D2012-0014

1. The Parties

The Complainant is Cosmetic Research Group of Sophia Antipolis, France, represented by Novagraaf France SA, France.

The Respondent is John Miller, of Mougins, France.

2. The Domain Name and Registrar

The disputed domain name <institutsoskin.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2012. On January 6, 2012, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On January 12, 2012, Register.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 23, 2012.

The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2012. On February 15, 2012, the Center notified the Respondent’s default.

On the same date, the Respondent sent an email communication to the Center informing that it was no longer interested in the disputed domain name and therefore, it would agree to transfer the disputed domain name to the Complainant. On February 16, 2012, the Complainant sent a request for suspension of the proceedings for 30 (thirty) days, which was granted by the Center on the same date until March 17, 2012. On March 15, 2012, the Complainant requested an extension of the suspension, that was granted until March 30, 2012. On March 14, 16 and 29, 2012, the Center received email communications from the Respondent regarding this matter. On March 29, 2012, the Complainant sent a request to reinstitute the proceedings. On the same date, the Center notified the parties about the reinstitution of the proceedings and informed them about the commencement of the panel appointment process. On March 30, 2012, Respondent’s legal counsel informed the Center that it had just been appointed in the matter and intended to file a Response shortly; it further requested the annexes attached to the amended Complaint. On April 2, 2012, the Center forwarded to the Respondent’s legal counsel the email communication dated January 25, 2012, containing the annexes to the amended Complaint, and informed it that is was currently in the procedure of the appointment of the Panel as notified to the Parties on March 29, 2012. On April 3, 2012, the Respondent filed a late response. On the same date, the Center acknowledged receipt of the Respondent’s late response and informed the parties that it would be forwarded to the Panel, once appointed, for its sole consideration. On April 4, 2012, the Complainant submitted a reply to the Respondent’s late response. On the same date, the Center acknowledged receipt of the Complainant’s email communication and informed the parties that it would be forwarded to the Panel, once appointed, for its sole consideration.

The Center appointed a sole panelist in this matter on April 5, 2012. However, on April 13, 2012, it became necessary for the sole panelist to recuse itself. On April 19, 2012 the Center notified the parties of the sole panelist’s recusal and informed them that an alternate panelist would shortly be appointed.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on May 1, 2012. 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 several trademarks consisting of SOSKIN. Such is the case in particular of:

- The French word trademark SOSKIN (n° 92 434 601), that was registered under classes 3, 5 and 44 of the Nice Classification, with a priority date as of September 21, 1992;

- The International word trademark registration SOSKIN (n° 614748) deriving from the French registration mentioned above, that was registered on March 7, 1994 under classes 3, 5 and 42 of the Nice Classification, and which is protected in Austria, Bulgaria, Benelux, China, Czech Republic, Democratic People’s Republic of Korea, Egypt, Germany, Greece, Hungary, Islamic Republic of Iran, Italy, Morocco, Poland, Portugal, Romania, Russian Federation, Singapore, Slovakia, Spain (with the exception of class 5), Switzerland, Turkey and Vietnam.

- CTM Registration of SOSKIN (n° 004669751), that got registered on February 1, 2010 under classes 3, 5 and 44 with a priority date as of October 6, 2005.

The Complainant in particular carries out its activities online under the domain name <soskin.fr>.

The disputed domain name was registered on February 17, 2007. The domain name has been linked in the past to a website that invites users to go to another website, “www.actiderm.com”, which appears to sell cosmetic products bearing the brand Actiderm.

On December 5, 2007, the Complainant entered into a licensing agreement with Aesthetimeds (France) Ltd., whose CEO was the Respondent. The objective of the Agreement was to enable Aesthetimeds (France) Ltd to develop an Institut based upon the know-how developed by the Complainant. According to Art. 1 of the Agreement, Aesthetimeds (France) Ltd was granted a license to use and exploit the Complainant’s trademark SOSKIN in Europe. Art. 2 added that the license extended to the whole Europe but for Greece and Chyprus. Art. 11 further made it clear that, upon termination, the license was automatically revoked.

This agreement was completed by a distribution agreement, signed on the same day between the Complainant and Aesthetimeds (France) Ltd.

Each agreement was to automatically terminate upon the termination of the other one, as both were interrelated. According to the Respondent, an addendum to the distribution agreement was also signed by the Parties. On this addendum, it was agreed by the Parties that Aesthetimeds (France) Ltd. was authorized to register a domain name including the SOSKIN Trademark.

Due to allegedly unpaid bills, the Complainant terminated the agreements by way of registered letter dated April 11, 2011.

As of the time of this Complaint, a complaint had also been initiated before Nominet with regards to the domain name <institutsoskin.co.uk>¹.

5. Parties’ Contentions

A. Complainant

The Complainant first argues that the disputed domain name is confusingly similar to its SOSKIN trademarks, since it entirely contains the said marks, which is the sole dominant element of the domain name, the word “institut” being merely descriptive.

The Complainant then affirms that the Respondent has no rights or legitimate interests in respect of the domain name. The disputed domain name would not correspond to any website and would automatically redirect users to “www.actiderm.com”, which sells cosmetic and sanitary products identical to the ones sold by the Complainant at “www.soskin.fr”. Such a use could not be considered to be legitimate. The Complainant further points out that, following termination on April 11, 2011 of the license and distribution agreements entered into by the parties in 2007, the Respondent could not claim any right or legitimate interest to further use the domain name.

Finally, the Complainant alleges that the domain name was registered and is being used in bad faith. The disputed domain name would be used to disrupt the Complainant’s business and attract users to the Respondent’s own website located at “www.actiderm.com”. Such a use cannot be fortuitous as the Parties both carry out their activities in the same field.

B. Respondent

On April 3, 2012, the Respondent forwarded a late submission to the Center, deemed to be his Response.

Respondent first argues that, not being a lawyer, he got confused by the procedural requirements to be met under the UDRP, all the more than he was facing a parallel proceedings in front of Nominet with regards to the domain name <institutsoskin.co.uk>. As the mediation phase to be held in front of Nominet only started on 6 February 2012, Respondent lost sighed of the deadline set by the Center in this case on February 14, 2012. The Respondent got all the more confused taking into account the two requests of suspension granted by the Center in March 2012.

As to the merits, the Respondent does not dispute that the dispute domain name is confusingly similar to the Complainant’s trademarks. He however contends that he has a right, respectively a legitimate interest in the domain name and that the domain name was neither registered nor being used in bad faith. First, the Complainant does not prove that the disputed domain name would have been registered in bad faith. Such would not be the case, as the disputed domain name would have been registered with the Complainant’s consent, as expressed in an addendum to the distribution agreement dated December 5, 2007, and numerous exchange of emails and facts would reflect this agreement between the parties. Respondent further owns a French trademark No. 3832549 registered under class 3 of the Nice Classification with a priority date as of May 18, 2011.

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Prior to turning to the merits, the Panel however has to address one procedural issue.

A. Procedural Issues

The Respondent did not file its Response on time, i.e. by February 14, 2012, even though he had been duly notified of the commencement of the proceedings on January 25, 2012, had received the Complaint including its annexes and had been notified of its default.

On April 3, 2012, the Respondent nevertheless filed a written document that he considers to be a “Response”. In substance, the Respondent’s counsel argues that the Respondent got confused by the different procedural requirements, the different pending proceedings and had first thought that he would be able to defend himself on his own before realizing that he would be better off with a counsel.

The question therefore arises as to whether the Panel should take into account the written document filed by the Respondent’s counsel and treat is as a Response within the meaning of the Rules.

The Panel has no hesitation to rule in the negative. The Respondent was duly notified of the commencement of the proceedings in accordance with the Rules, paragraphs 2(a) and 4(a), of the deadline set to file his Response as well as of its default, which in any case took place on February 15, 2012, i.e. even prior to the suspension of the proceedings that only occurred on February 16, 2012. Consequently, the Respondent had already defaulted and been duly notified of such default, and the Panel sees no reason at that time why Respondent would have been confused.

It is the Panel’s belief that the Rules have to be applied in a consistent way. Late or additional submissions should only be accepted under exceptional circumstances, as rightfully held by a majority of panels (see, e.g., paragraph 4.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

Such certainly is not the case when a respondent finally considers more than a month after having been notified of its default that the appointment of one counsel might have been more helpful to defend its case. The Respondent has to bear the potential consequences of his own choice or negligence on that regard.

As a result, the Panel shall disregard the Response.

A Respondent's default, however, does not automatically result in a decision in favor of the Complainant, and it is up to the Complainant to demonstrate that the three requirements of the Policy, paragraph 4(a) have been satisfied (see, e.g. paragraph 4.6 of the WIPO Overview 2.0).

The Panel shall now turn to the merits of the case.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proves to be the holder of several verbal trademarks consisting of SOSKIN.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).

This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive. Such happens to be the case here. The addition of a descriptive term such as “institut” does obviously not exclude the confusing similarity resulting from the incorporation of the Complainant’s trademarks in the disputed domain name.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

In the present case, the Respondent was initially acting as the CEO of Aesthetimeds (France) Ltd, the distributor and licensee of the Complainant. The issue to know whether a distributor is entitled to register a domain name consisting of the licensor’s trademark has received different constructions from UDRP panels. Following the criteria put in place by the panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, a majority view holds that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark (see, e.g., paragraph 2.3 of the WIPO Overview 2.0).

While there is little doubt in the Panel’s opinion that the Respondent had at least some legitimate interests to hold the disputed domain name on behalf of the Complainant while performing the licensing and distribution agreements, such was not the case after termination. Art. 11 of the licensing agreement indeed made it clear that, upon termination, the license was automatically revoked. As a result, the Panel considers that, after termination, the Respondent could not further claim any legitimate interests in holding the disputed domain name, and that such further holding of the disputed domain name was to be considered as taking place against the Complainant’s will.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

In the present case, the Panel finds that the Complainant did not establish that the domain name has been registered in bad faith.

As pointed out by the Panel in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 (“Mile”), “[T]he consensus view since the Policy was implemented in 1999 has been that the conjunctive “and” indicates that there must be bad faith both at the time of registration and subsequently”.

The consensus view that the Policy requires bad faith at the time of registration of the domain name has been challenged in some recent UDRP decisions, prominently City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643 (“Mummygold”) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (“Octogen”); see also Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278; Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001. These decisions treat the requirement to establish that the respondent “registered and used the domain name in bad faith” as a “unified concept.

In the Mile case, the panel however put under scrutiny numerous decisions rendered after the Mummygold/Octogen cases to find out that:

“If a consensus developed that a line of prior decisions had reached the wrong result, and if panels generally adopted a new approach on an issue, this Panel also would be open to considering whether a new approach was appropriate, both substantively under the Policy and in order to promote consistency. However, the Mummygold/Octogen reasoning has not prompted any such consensus; to the contrary, a number of decisions have expressly considered and rejected it. See, e.g., Validas, supra; Eastman Sporto, supra; Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455; Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; Tata Communications International Pte Ltd (f/k/a VSNL International Pte Ltd) v. Portmedia Inc. / TRUEROOTS.COM c/o Nameview Inc. Whois, WIPO Case No. D2010-0217 (majority opinion); Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470; A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800 (majority opinion). The fact that so many panelists have declined to follow the Mummygold/Octogen approach argues against an emerging consensus to overturn a long-established doctrine and provides yet another reason for this Panel to decline to adopt the Mummygold/Octogen reasoning.”

The Panel finds the view held in the Mile case to be convincing. The “registration” cannot be considered as a continuous process that would have to be construed in line with the circumstances surrounding the case as of the time the Complaint is filed. Such a construction would render the difference between “registration” and “usage” pointless. Those are clearly two distinctive requirements whose rationale lies in the very goal the UDRP is trying to pursue. It is indeed to be kept in mind that the UDRP was enacted in order to fight against a particular set of circumstances, namely the undue and abusive registration of domain names in so-called cybersquatting cases. Under the UDRP, such cases presuppose the registration itself to occur in bad faith. While this might, and actually has been considered as a weakness from the UDRP in particular with regards to some ccTLDs alternative dispute mechanisms that have resulted in the putting in place of alternative criteria, namely registration or use in bad faith, there is no reason to depart from the interpretation given by a majority view that, under the Policy, paragraph 4(a) (iii), the conjunctive “and” indicates that there must be bad faith both at the time of registration and subsequently.

In the present case, the disputed domain name was registered at a time when the Respondent, acting as the CEO of Aesthetimeds (France) Ltd, was the licensee of the Complainant, at a time when the parties intended to develop a concept of “institute” around the SOSKIN trademarks. As a result, one cannot consider such a registration to have taken place in bad faith and the Complainant does not raise any factual circumstance that might help the Panel to consider that such a registration occurred in bad faith².

As a result, the Panel is of the opinion that the disputed domain name <institutsoskin.com> has not been registered in bad faith and therefore, the paragraph 4(a)(iii) of the Policy has not been satisfied.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Philippe Gilliéron
Sole Panelist
Dated: May 11, 2012

¹ The Panel has taken judicial notice that the Nominet proceedings appear now to have been decided in Complainant’s favour. However, the UDRP and Nominate Policies are different, including in so far as the requirement under the UDRP goes on the Complainant to prove both bad faith registration and use of the domain name. (emphasis added; see development below)

² The Panel further notes that had it admitted the Respondent’s Response in this case, the addendum to the distribution agreement annexed to the Response would have provided a further basis to the Panel’s finding.