The Complainant is NeoStrata Company, Inc. of Princeton, New Jersey, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States / Madelyn Bradford of Chesapeake, Virginia, United States.
The disputed domain name <neostratapro.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 the Complainant on November 21, 2018, 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 November 21, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2018.
The Center appointed Gregory N. Albright as the sole panelist in this matter on January 4, 2019. 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.
The Complainant has secured trademark registrations for the NEOSTRATA trademark in the United States, the European Union and in several additional jurisdictions around the world, including:
July 29, 1997
October 27, 1998
May 26, 1998
The disputed domain name <neostratapro.com> was registered on May 15, 2018. The disputed domain name resolves to a webpage providing information about third-party products and containing links to third-party webpages for the purchase of such products.
The Complainant’s founders are recognized for making discoveries related to Alpha Hydroxy Acids (AHAs). They discovered that AHA compounds such as Glycolic Acid and Lactic Acid are beneficial both in the treatment of dermatological conditions. The continuing research and clinical experience of Complainant’s founders revealed that AHAs are not only beneficial in the treatment of dermatological conditions, but are also effective in stimulating older damaged skin to rejuvenate itself.
The Complainant was formed in 1988 by two dermatologists to bring their technologies and cosmeceutical formulations directly to skincare professionals, their patients, clients, and consumers. The Complainant continues their research today, developing and marketing clinically proven, dermatologist-developed skincare brands including Neostrata, which is sold in more than 80 countries worldwide.
The Complainant is a wholly owned subsidiary of Johnson & Johnson (“J&J”) one of the largest and most well-known companies in the world. The J&J family of companies includes one of the the world’s premier consumer health companies, one of the world’s largest and most diverse medical devices and diagnostics companies, the world’s fourth-largest biologics company and the world’s eighth largest pharmaceuticals company. J&J has more than 260 operating companies in 60 countries around the world, employing more than 134,000 people.
The Complainant actively promotes its platform through its website, “www.neostrata.com”, and social media at Facebook, Instagram, LinkedIn and YouTube.
As a result of the enormous success of the Complainant’s Neostrata products, as well as the amount, volume, and geographic extent of its customers, the NEOSTRATA trademark is a strong mark with inherent goodwill. The NEOSTRATA trademark is registered as stated above in Section 4.
There has not ever been any relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name. The disputed domain name is being used in connection with a website that appears to be a blog with information about a variety of products, including steroids, weight loss pills, and CBD oils. None of the “articles” at the website mention the Complainant or its NEOSTRATA products. Instead, each “article” is little more than a thinly-veiled advertisement for the products discussed, with a link to a third-party website to purchase those items.
The Respondent did not respond to the Complainant’s October 25, 2018 demand letter, which requested transfer of the disputed domain name to the Complainant. Instead, the Respondent continued to post new “articles” at the website to which the disputed domain name resolves.
Complainant has strong rights in the NEOSTRATA trademark, which it has used in the United States and internationally starting at least as early as 1997.
The disputed domain name is confusingly similar to the NEOSTRATA trademark and the Complainant’s own <neostrata.com> domain name and website address. The disputed domain name incorporates the NEOSTRATA trademark entirely and merely adds the “pro” suffix and the “.com” generic Top-Level Domain (“gTLD”).
The Registrant’s selection of a domain name identical to the Complainant’s own domain name, save for the addition of the term “pro,” does nothing to distinguish the disputed domain name from the Complainant’s NEOSTRATA trademark. The NEOSTRATA trademark remains the dominant and distinctive part of the disputed domain name; the disputed domain name resembles the Complainant’s own <neostrata.com> domain name nearly identically; and the vast majority of those visiting the website associated with the disputed domain name are likely to believe, falsely, that any website associated with the disputed domain name is a website of the Complainant, as the Respondent plainly intends.
There is no evidence that the Respondent has either rights or legitimate interests in the disputed domain name.
The Respondent registered the disputed domain name after the Complainant had made extensive use of the NEOSTRATA trademark around the world for decades, and after the Complainant had obtained registrations for its NEOSTRATA trademark. The Respondent therefore was on actual, or at a minimum, constructive notice of the Complainant’s rights before the Respondent adopted a confusingly similar variation of the Complainant’s NEOSTRATA trademark as the disputed domain name.
Moreover, since the Complainant adopted and made extensive use of the NEOSTRATA trademark long before the registration of the disputed domain name, the Respondent has the burden to establish rights or legitimate interests in the disputed domain name, and cannot carry that burden. The Respondent cannot show bona fide or legitimate use of the disputed domain name to advertise health and wellness products that have nothing to do with the Complainant and its products. To be bona fide, the offering must meet several requirements including, at minimum, the following: the Respondent must actually be offering the goods or services at issue; the Respondent must use the site to sell only the trademarked goods; and the website to which the disputed domain name resolves must accurately disclose the registrant’s relationship with the trademark owner. The Respondent has not posted a prominent disclaimer on the website, and the products advertised for sale at the disputed domain name are often from the Complainants’ direct competitors.
The Complainant is aware of no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name. The Complainant has never authorized the Respondent to use the NEOSTRATA trademark, or any marks confusingly similar thereto, for any purpose, including as a domain name.
There is no basis for the Respondent to have chosen to register the disputed domain name unless the Respondent was seeking to create an association with the Complainant. The disputed domain name incorporates the Complainant’s registered NEOSTRATA trademark in its entirety. Thus, the Respondent’s intent to register the disputed domain name could only be to intentionally confuse consumers and to trade on the Complainant’s rights and reputation. This constitutes registration and use in bad faith.
Moreover, the Respondent failed to make its actual contact information available in the WhoIs records for the disputed domain name. Upon information and belief, the Respondent purposefully concealed its true identity to make it difficult for any interested third party to locate the Respondent for purposes of addressing the disputed domain name. Failure to provide any such information is clear evidence of the Respondent’s bad faith registration of the disputed domain name.
Because the ultimate effect of any use of the disputed domain name will be to cause confusion with the Complainant, the use and registration of the disputed domain name must be considered to be in bad faith. The Respondent’s use of the disputed domain name violates paragraph 4(b)(iv) of the Policy, which provides that the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source is evidence of bad faith.
The NEOSTRATA trademark is an immediately-recognizable trademark that exclusively identifies the Complainant. The Respondent’s adoption and use of the NEOSTRATA trademark and the format of the disputed domain name shows the Respondent’s familiarity with the Complainant’s trademark, and the Respondent’s interest in exploiting the fame of the trademark. Given that the Respondent has no connection with the Complainant and has never been authorized by the Complainant to use or register the disputed domain name, the Respondent’s opportunistic bad faith registration and use are established.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name
The Complainant has shown that it owns rights in the NEOSTRATA trademark and that it acquired those rights before the Respondent registered the disputed domain name.
The Panel also finds that the Complainant has established confusing similarity. First, a gTLD is normally disregarded when evaluating the identity or confusing similarity between a complainant’s mark and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”). Here, the addition of “.com” to the disputed domain name does not dispel the confusing similarity.
Second, the addition of the descriptive term “pro” to the Complainant’s NEOSTRATA trademark – to create the disputed domain name – does not in this Panel’s view eliminate confusing similarity. The disputed domain name incorporates the entirety of the NEOSTRATA trademark, and the mark is the disputed domain name’s predominant feature. Further, “pro” is a non-distinctive addition to the Complainant’s mark that prospective customers might reasonably expect to see associated with a website operated by the Complainant. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8.
The first element of paragraph 4(a) of the Policy is satisfied.
The Complaint confirms that the Respondent is not connected to the Complainant, and the Respondent does not have the Complainant’s permission to use the disputed domain name or the Complaint’s registered NEOSTRATA trademark. The Respondent is not the Complainant’s authorized sales or service agent, for example.
Further, the Complainant has a made a prima facie showing that the Respondent is not using the disputed domain name in connection with the bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Respondent is not using the disputed domain name solely to offer products marked with the Complainant’s NEOSTRATA trademark. Instead, as the Complainant has shown, the Respondent is using the disputed domain name to provide information about a variety of products, including steroids, weight loss pills, and CBD oils, with no mention of the Complainant or its NEOSTRATA trademark, and the website provides links to third-party websites to purchase items not associated with the Complainant. Nor does the Respondent’s website contain any disclaimer of any association or relationship with, or endorsement or sponsorship by, the Complainant; to the contrary, by adopting the entirety of the Complainant’s NEOSTRATA mark in the disputed domain name, it falsely suggests that it is owned or sponsored by the Complainant.
The Respondent also did not come forward with any evidence to rebut the Complainant’s prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second element of paragraph 4(a) of the Policy is satisfied.
The disputed domain name was registered by the Respondent more than 20 years after the Complainant commenced use and obtained trademark registrations for the NEOSTRATA mark. The conclusion is inescapable that the Respondent chose the disputed domain name with knowledge of the Complainant’s mark and with the intent to trade on the mark and divert to the Respondent’s website Internet users who were seeking to do business with the Complainant. The Panel therefore finds that the Respondent registered the disputed domain name in bad faith.
In addition, the Respondent did not respond to the Complaint in this proceeding, or to the Complainant’s October 25, 2018 demand letter, which advised the Respondent of the Complainant’s trademark rights and requested voluntary transfer of the disputed domain name to the Complainant. Instead, both before and after receipt of the Complainant’s demand letter the Respondent continued to post articles and competing links to the website to which the disputed domain name resolves. The Panel therefore finds that the Respondent used and with notice of the Complainant’s rights continued to use the disputed domain name in bad faith.
The third element of paragraph 4(a) of the Policy is satisfied.
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 <neostratapro.com> be transferred to the Complainant.
Gregory N. Albright
Date: January 18, 2019
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