WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Episciences, Inc. v. Domains by Proxy, LLC / Amanda Steele, DR Media Ltd

Case No. D2017-1993

1. The Parties

Complainant is Episciences, Inc. of Boise, Idaho, United States of America, represented by Bradlee Frazer, United States of America.

Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Amanda Steele, DR Media Ltd of Yorba Linda, California, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <epionceskincare.net> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2017. On October 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 13, 2017 the Registrar 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 Complainant on October 18, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 20, 2017.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on October 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 20, 2017.

The Center appointed Richard W. Page as the sole panelist in this matter on November 30, 2017. 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

On April 19, 2005, United States federal trademark registration number 2,942,520 was issued to Complainant for the word mark EPIONCE and on November 6, 2012, United States federal trademark registration number 4,236,943 was issued to Complainant for the design mark EPIONCE (collectively referred to as the “EPIONCE Mark”). The goods covered by the registrations include both: Class 3 – “topically applied cosmetics, namely, skin creams, lotions, powders, and gels”; and Class 5- “topically applied nutraceuticals and dermatologicals, namely, creams, lotions, oils, and gels for the treatment of skin conditions”.

Complainant has continuously used the EPIONCE Mark in commerce throughout the United States as a trademark for the described goods. Complainant also has several international registrations of its EPIONCE Mark. In particular, a registration in the United Kingdom of Great Britain and Northern Ireland. Moreover, the EPIONCE Mark has appeared on and been used in a wide variety of marketing and advertising contexts, such as webpages, external publications, marketing materials and other documents produced by Complainant. There is uncontested usage of the EPIONCE Mark since at least as early as October 2002.

The Disputed Domain Name was registered on June 29, 2017. The Disputed Domain Name resolves to an online shop for products bearing the EPIONCE Mark.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has enforceable trademark rights in the EPIONCE Mark and continuous use since at least as early as October 2002, evidencing protectable and significant trademark rights. Complainant further contends that its registration number 2,942,520 has become incontestable under the Lanham Act, Section 15 (15 U.S.C. §1065).

Complainant alleges that the Disputed Domain Name includes the entirety of the EPIONCE Mark. Further that the generic terms “skin” and “care” appended to the word “epionce” in the Disputed Domain Name create no legally significant differences between the Disputed Domain Name and the EPIONCE Mark, since the goods being sold by both Respondent and Complainant are skin care products. Complainant further alleges that the likelihood of confusion is not avoided between otherwise confusingly similar marks merely by adding or deleting a house mark, other non-distinctive matter, or a term that is descriptive or suggestive of the named goods and services; if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences.

Complainant further alleges that the likelihood of confusion is compounded because the Disputed Domain Name resolves to a website that is advertising goods that are similar and related to those goods for which Complainant has used and is using the EPIONCE Mark, namely skin care products. Complainant further alleges that Respondent’s product photographs, links and informational content displayed on its website are virtually identical those of Complainant.

Complainant argues that Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name. Complainant further argues that Respondent in not making a legitimate, noncommercial or fair use of the Disputed Domain Name without intent for commercial gain, or without intent to misleadingly divert consumers, or without intent to tarnish the EPIONCE Mark. Complainant further alleges that Respondent is selling goods on its website that are virtually identical to Complainant’s goods, using Complainant’s registered EPIONCE Mark.

Complainant avers that Respondent’s intent is purely to capitalize on the EPIONCE Mark owned by diverting Internet traffic to its website and confusing consumers into thinking it is a legitimate reseller site for EPIONCE Mark products. Complainant further avers that the registration of the EPIONCE Mark gives constructive notice to Respondent of Complainant’s trademark rights. Both registrations were accomplished before Respondent registered the Disputed Domain Name on June 29, 2017. Respondent is not a licensee or other third party authorized to use the EPIONCE Mark.

Complainant alleges that Respondent has registered and used the Disputed Domain Name in bad faith because Respondent is trying to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the EPIONCE Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

Complainant further alleges that Respondent chose the Disputed Domain Name with the sole purpose of benefitting from the well-known EPIONCE Mark. Complainant further alleges that there appears to be no reason to use the EPIONCE Mark for any purpose other than creating an impression of an association with Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Respondent is not obliged to participate in a domain name dispute proceeding, but when respondent fails to do so, asserted facts that are not unreasonable may be taken as true and respondent may be subject to the inferences that flow naturally from the information provided by complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the EPIONCE Mark,

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the EPIONCE Mark, and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the EPIONCE Mark. 15 U.S.C. § 1115. Complainant further alleges that at least one registration is incontestable and conclusive evidence of its ownership of the EPIONCE Mark and exclusive right to use the EPIONCE Mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested Complainant’s assertion of rights in the EPIONCE Mark.

The Panel finds that Complainant has established enforceable trademark rights for purposes of this proceeding.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the EPIONCE Mark pursuant to the Policy paragraph 4(a)(i) of the Policy.

Complainant alleges that the Disputed Domain Name includes the entirety of the EPIONCE Mark. Further that the generic terms “skin” and “care” appended to the word “epionce” in the Disputed Domain Name create no legally significant differences between the Disputed Domain Name and the EPIONCE Mark, since the goods being sold by both Respondent and Complainant are skin care products.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. The addition of non-distinctive or descriptive terms does not cure confusing similarity. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel notes that the entirety of the EPIONCE Mark is in the Disputed Domain Name. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety typically is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See, Rapidshare AG and Christian Schmid v. Majeed Randi, WIPO Case No. D2010-1089.

Therefore, the Panel finds that Complainant has established the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the EPIONCE Mark.

Complainant alleges that Respondent is selling goods on its website that are virtually identical to Complainant’s goods, using Complainant’s registered EPIONCE Mark.

Complainant avers that Respondent’s intent is purely to capitalize on the EPIONCE Mark by diverting Internet traffic to its website and confusing consumers into thinking it is a legitimate reseller site for EPIONCE Mark products. Complainant further avers that the registration of the EPIONCE Mark gives constructive notice to Respondent of Complainant’s trademark rights. Both registrations were accomplished before Respondent registered the Disputed Domain Name on June 29, 2017. Respondent is not a licensee or other third party authorized to use the EPIONCE Mark. Therefore, according to Complainant, any sales made by Respondent are in violation of Complainant’s trademark rights and are not bona fide sales of goods or services or legitimate noncommercial or fair use.

Furthermore, the record does not indicate that Respondent has been commonly known by the Disputed Domain Name.

The Panel finds that Complainant has sustained its burden of establishing a prima facie case that Respondent lacks rights to or legitimate interests in the Disputed Domain Name.

Respondent has not contested Complainant’s contentions regarding Respondent’s lack of rights or legitimate interests in the Disputed Domain Name and nothing in this file disproves these contentions.

Therefore, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the EPIONCE Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the EPIONCE Mark reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the EPIONCE Mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

As noted above, Complainant contends that Respondent’s intent is purely to capitalize on the EPIONCE Mark by diverting Internet traffic to its website and confusing consumers into thinking it is a legitimate reseller site for EPIONCE Mark products. Complainant further contends that the registration of the EPIONCE Mark gives constructive notice to Respondent of Complainant’s trademark rights. Both registrations were accomplished before Respondent registered the Disputed Domain Name on June 29, 2017.

Complainant further contends that Respondent chose the Disputed Domain Name with the sole purpose of benefitting from the well-known EPIONCE Mark. Complainant further alleges that there appears to be no reason to use the EPIONCE Mark for any purpose other than creating an impression of an association with Complainant.

The Panel notes that Respondent has not contested these allegations of bad faith and finds that Complainant has established bad faith pursuant to paragraph 4(b)(iv) of the Policy.

Therefore, Complainant has proven bad faith under 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 <epionceskincare.net> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: December 4, 2017