WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZO Skin Health, Inc. v. PodRepairs Pty Ltd / Brian Morris and Ulla Saynajaaho

Case No. DAU2012-0024

1. The Parties

The Complainant is ZO Skin Health, Inc., of California, United States of America (US) represented by Parsonage Vandenack Williams LLC, US.

The Respondents are Brian Morris (the First Respondent), Ulla Saynajaaho (the Second Respondent) and PodRepairs Pty Ltd (the Third Respondent) of New South Wales, Australia. Ulla Saynajaaho is represented by Norton Rose, Australia.

2. The Domain Name and Registrar

The disputed domain name <zoskinhealth.com.au> (the “Domain Name”) is registered with Crazy Domains Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2012. The Complaint initially named the Second Respondent as the sole Respondent in the proceeding. On October 1, 2012, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the Domain Name. On October 8, 2012, Crazy Domains Pty Ltd transmitted by email to the Center its verification response confirming that the Third Respondent is listed as the registrant of the Domain Name with the Second Respondent being listed as the contact person for the Third Respondent and providing the contact details.

The Complainant and the Second Respondent requested a suspension of the proceedings on October 9, 2012 in order to discuss the possible settlement of the proceedings. The Center suspended the proceedings on October 9, 2012 until November 8, 2012. The proceedings were reinstituted on November 8, 2012. The Center requested an amended Complaint on November 12, 2012. The First Amended Complaint was submitted by the Complainant by email on November 15, 2012. The First Amended Complainant named Brian Morris (the First Respondent) and Ulla Saynajaaho (the Second Respondent) as Respondents.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2012. A Response from the Second Respondent was filed with the Center on December 6, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on December 20, 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.

On December 24, 2012, the Panel issued an Administrative Procedural Panel Order (“Panel Order”) requesting that the Complainant amend its Complaint to add the Third Respondent to the Complaint. This is because under the Rules the Respondent is defined as the holder of a domain name registration against which a complaint is initiated. The Panel interprets this requirement as requiring the named registrant of the domain name registration to be a respondent in the proceeding. In the present proceeding the named registrant of the Domain Name is PodRepairs Pty Ltd as confirmed in the verification response dated October 8, 2012 provided by Crazy Domains Pty Ltd.

On January 9, 2013 the Complaint filed the Second Amended Complaint by email, copied to each of the Respondents and the Registrar. The Second Amended Complaint listed the First, Second and Third Respondents as Respondents.

The Panel Order provided that any of the Respondents could submit a response to the Second Amended Complaint by January 21, 2013. On January 21, 2013, the Second Respondent’s representative made a communication with the Center indicating that, with one minor amendment, the Second Respondent would continue to rely on its Response filed on December 6, 2012. The Panel will therefore issue its decision on the basis of the Second Amended Complaint and the Response from the Second Respondent filed on December 6, 2012.

4. Factual Background

The Complainant is a US based company that operates in the skin-care industry. It was launched in 2007 by Dr Zen Obagi, a dermatologist based in the US, who operates as the Complainant’s medical director. The Complainant’s skin-care products have been featured in numerous magazines and industry related publications since its launch.

The Complainant has held an Australian trade mark registration for the composite mark depicting the word “ZO” using a “zig-zag stripe and curl form letters” (the “ZO Mark”) since November 14, 2008. The Complainant has also registered a word mark for “ZO Skin Health” (the “ZO SKIN HEALTH Mark”) in various countries through the world including the South Korea, South Africa and the European Union. The Complainant also maintains an official website at “www.zoskinhealth.com”.

The Domain Name < zoskinhealth.com.au> was registered on April 20, 2011. The Domain Name does not redirect to an active website, however prior to the commencement of the proceeding, the Domain Name re-directed to a website located at “www.mv-tools.com.au” which was a website for a medical laser supply company.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s ZO and ZO SKIN HEALTH Marks;

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

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

The Complainant is the owner of the ZO Mark. It owns a trade mark registration for the ZO Mark in Australia. It also owns trade mark registrations for the ZO SKIN HEALTH Mark in various countries around the world. The Complainant also has an Australian distributor named Zo Skin Health Australia Pty Ltd.

The Domain Name is identical to the ZO SKIN HEALTH Mark, confusingly similar to the ZO Mark and the name of the Complainant and its Australian distributor.

The Respondents have no rights or legitimate interests in the Domain Name. The Respondents do not hold a trade mark for “ZO” or any similar trade mark. The Respondents are not licensed or authorised to use the ZO Mark or any of the Complainant’s intellectual property rights. The Respondents do not have any other apparent rights in the Domain Name. Rather, the Respondents have in the past re-directed the Domain Name to a third party website that at best is tangentially related to skin health. Such use does not give rise to rights or legitimate interests.

The Domain Name was registered and is being used in bad faith. The Second Respondent’s employer (who is also the partner of the First Respondent) has in the past been a regular purchaser of the Complainant’s products. The Complainant later chose not to permit the Second Respondent’s employer to distribute the Complainant’s products in Australia. It was after that action that the Domain Name was registered.

Prior to the Complainant filing the Complaint, the Domain Name was used to transfer valuable web traffic and goodwill to a third party’s website. Upon being contacted by the Complainant, the Second Respondent offered to transfer the Domain Name to the Complainant for payment of AUD 10,000 and for approximately AUD 15,000 worth of the Complainant’s products. Once that offer was rejected, the Second Respondent amended the registration of the Domain Name, replacing it as Registrant Contact Name with the First Respondent. This amendment was done solely to increase the cost of bringing the present proceeding and force the Complainant to accept the Second Respondent’s offer. The circumstances of the registration of the Domain Name, as well as the subsequent conduct of the Respondents illustrate that the Domain Name has been registered and used in bad faith.

B. Respondent

The Second Respondent notes that it has never been the Registrant of the Domain Name. Furthermore the Second Respondent has no relationship with the First and Third Respondents. The First Respondent is the de facto partner of the Second Respondent’s employer. For the purposes of settlement, the First and Third Respondents are prepared to allow the transfer of the Domain Name if settlement between the Complainant and Second Respondent can be achieved.

6. Discussion and Findings

The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are different policies, both share substantial similarities and, as such, the Panel finds it appropriate to rely on authority concerning the UDRP in resolving the present dispute.

A. Identity of the Respondent

On July 17, 2012, the Complainant conducted a search of the WhoIs registry located at <ausregistry.com.au>. That search indicated that the Registrant of the Domain Name was the Third Respondent. The Registrant Contact Name was the Second Respondent. At some time between that date and October 8, 2012 the WhoIs record for the Domain Name was updated with the Registrant Contact Name being amended to replace the Second Respondent with the First Respondent.

Although the Second Respondent is not presently the Registrant or Registrant Contact Name for the Domain Name, it appears that she was the Registrant Contact Name at the time the Complaint was filed (and certainly at the time the Complaint was prepared) and has engaged in a variety of conduct in relation to the Domain Name. In particular she has, in correspondence with the Complainant prior to filing the Complaint, held herself out as the owner of the Domain Name for the purpose of settlement negotiations. In her response, the Second Respondent denies any relationship between it and the First and Third Respondents. She then follows this denial with statements indicating a relationship between her and the First Respondent (her employer is the First Respondent’s partner) and a statement that a settlement with her would also operate as a settlement between the Complainant and all three Respondents as, if settlement between the Complainant and the Second Respondent is achieved, the First and Third Respondents were prepared to give up the keys and allow the transfer of the Domain Name.

In previous auDRP proceedings, panels have treated the Registrant and Registrant Contact Names as essentially co-respondents (see Chief Architect, Inc. v. Nigel Varley / CAD Australia Pty Limited, WIPO Case No. Case No. DAU2011-0004). Given the relationships between the three respondents in the proceeding, the likelihood that the First and Second Respondent have at various times operated as the controlling mind behind the Third Respondent, as well as the lack of any explanation for the change in the Registrant Contact Name from the Second to the First Respondent, the Panel will allow the proceeding to continue against all three Respondents as co-respondents.

B. Identical or Confusingly Similar

To prove this element the Complainant must have name, trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark.

The Complainant is the owner of the ZO Mark, having registrations for the ZO Mark as a trade mark in Australia.

The Domain Name consists of the ZO Mark and the suffix “skin health”. The Domain Name is confusingly similar to the Complainant’s ZO Mark since it consists of a textual representation of the ZO Mark in its entirety with the addition of the words “skin and health”, which is descriptive of Complainant’s skin health products and the Complainant’s business. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ZO Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

Given the finding of confusing similarity to the Complainant’s ZO Mark, it is not necessary to make a finding as to whether the Complainant’s overseas registrations or present use of the ZO SKIN HEALTH Mark grant it rights in the ZO SKIN HEALTH Mark for the purposes of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.” (Policy, paragraph 4(c))”

The Respondents are not affiliated with the Complainant in any way. They have not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ZO Mark or a mark similar to the ZO Mark. There is no evidence that the Respondents are commonly known by the Domain Name or any similar name. There is no evidence that the Respondents have made a bona fide use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name. There is no evidence that the Respondents have used the Domain Name in connection with a fair, legitimate or noncommercial use.

The Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the Domain Name. The Respondents have had an opportunity to rebut the presumption that they lack rights or legitimate interests but have chosen not to do so. In particular, the Second Respondent makes no submissions on this point in her Response. The Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

D. Registered or Subsequently Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on Respondent’s web site or location.

The Panel finds that the Respondents, at the time of registration of the Domain Names, knew of the existence of the ZO Mark. The Complainant had supplied its products to the Second Respondent’s employer/ First Respondent’s partner for distribution in Australia. The Second Respondent was at the time attempting to purchase additional products of the Complainant to distribute in Australia. Given that the Second and Third Respondent are in essence the controlling mind behind the First Respondent, the Respondents’ conduct in registering the Domain Name when they were aware of the Complainant’s ZO Mark and lacked rights or legitimate interests of their own amounts to registration in bad faith.

Since the registration of the Domain Name, the Second Respondent has made offers to sell the Domain Name to the Complainant, including an offer to sell the Domain Name for goods and money to the value of AUD 25,000. Based on the statement in the Response that if settlement between the Second Respondent and the Complainant was achieved, the First and Third Respondent would be prepared to allow for the transfer of the Domain Name, it appears likely that each of the Respondents were aware of or complicit in the offer to sell the Domain Name to the Complainant.

The Respondents have provided no explanation for their registration of the Domain Name, nor have their actions indicated any legitimate intention to use the Domain Name. The circumstances of this proceeding indicate that the Respondents have registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant, for valuable consideration in excess of their documented out-of-pocket costs directly related to the Domain Name. This is evidence of registration and use of the Domain Name in bad faith pursuant to paragraph 4(b)(i).

The Panel, while noting that the Policy only requires that a complainant shows that a respondent registered or used the domain name at issue in bad faith, finds that the Respondents have registered and have subsequently used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <zoskinhealth.com.au> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: February 4, 2013