The Complainant is Irish Response Ltd, which trades as Lifes2good in Galway, Ireland. It is represented by Ullman, Shapiro & Ullman, LLP from New York, United States of America.
The Respondent is None with an address in Nutley, New Jersey, USA. Apparently on its behalf, Dragos Chihaia nominated as the Respondent’s legal representatives Stuart Rabner and Mark Yampaglia, also of New Jersey, USA together with Paul Egan of Dublin, Ireland.
The disputed domain name <viviscalproducts.com> is registered with GoDaddy.com, Inc.
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2010 naming Paul Chihaia as the Respondent. On December 7, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 8, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response noting that the registrant of the Disputed Domain Name was “None” and that Paul Chihaia was the Administrative Contact and providing his contact details.
In accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraphs 2(a) and 4(a), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), the Center formally notified Paul Chihaia of the Complaint, and the proceedings commenced on December 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2011. Paul Chihaia did not submit any formal response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Philip N. Argy as the sole panelist in this matter on January 14, 2011. 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.
Upon reviewing the case file the Panel formed the view that the proceedings should have been brought against “None” as the registrant of the Disputed Domain Name rather than against Paul Chihaia personally. It therefore ordered on January 26, 2011 that an amended Complaint be filed replacing references to Paul Chihaia as the Respondent with “None”. The Complaint so amended was filed on January 27, 2011. For good order the Panel directed service of the amended Complaint on the Respondent’s nominated legal representatives. The Panel also ordered the Respondent to file an English language translation of a document written in Romanian that it had sent to the Center on January 6, 2011 (in case it could be construed as a Response). And finally, the Panel ordered that the time within which it should furnish a decision was to be extended to accommodate compliance with the foregoing orders. As at the date of this decision, the Respondent had not complied with that order and has otherwise not answered the Complaint. In those circumstances the Panel has determined that it is appropriate to proceed as if the Respondent had filed no Response.
References hereafter to the “Complaint” are to the Amended Complaint filed on January 27, 2011.
All other procedural and administrative requirements appear to have been satisfied. The Panel notes here that in accordance with paragraph 11 of the Rules, the language of the proceedings is English.
The following salient facts, taken from the Complaint, were uncontested:
a) The Complainant has been in operation since 1997 and owns registrations for the trademark VIVISCAL throughout the world in respect of food supplements and cosmetics products.
b) The Complainant has invested tremendous time, money and resources in cultivating VIVISCAL into the worldwide recognized food supplement and cosmetic mark it is today.
c) The Complainant has also invested in the development of its website “www.viviscal.com” where it markets and sells its food supplements and cosmetic products.
d) The Respondent is making a commercial use of the website to which the Disputed Domain Name resolves by marketing and selling nutritional and cosmetic goods and services of the same nature as the Complainant's goods and services.
1. The Disputed Domain Name is nearly identical to Complainant’s brand name, Viviscal, its website “www.viviscal.com”, and its registered trademark VIVISCAL, thereby creating a likelihood of confusion.
2. The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant contends that Respondent’s interests are not legitimate because the Respondent is making a commercial use of the website by marketing and selling nutritional and cosmetic goods and services of the same nature as the Complainant’s goods and services. The Respondent acquired the disputed site with intent for commercial gain by diverting consumers from the Complainant’s site based on the extremely high likelihood of confusion between the sites. Additionally, “viviscal” is not a descriptive word in which the Respondent might have an interest, and the Complainant as the trademark owner of VIVISCAL has not consented to the Respondent’s use of the trademark.
3. The Respondent registered the Disputed Domain Name in bad faith and is using it in bad faith. In particular, the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant as a business competitor by diverting the flow of customers from the Complainant’s site to the Respondent’s identical site and also by diverting customers from the Complainant’s online distributors who “do not knock-off Complainant’s trademark by incorporating it into their domain names”, thereby harming the Complainant's relationships not only with end-users but also its own legitimate distributors. Potential Internet users are likely to believe that the Complainant’s VIVISCAL branded products can be found at the website to which the Disputed Domain Name resolves. Even though the Complainant’s genuine products can sometimes be purchased there, the disruption to the Complainant's business, distributors and customers is not thereby excused. Furthermore, the Respondent is intentionally attracting, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The identical nature of the Respondent’s site and the Complainant’s mark is misleading in that it deceives consumers into a reasonable belief that the Complainant is the source, operator, sponsor or affiliate of the Respondent’s website and goods and services advertised on the site.
The Respondent did not file a substantive response to the Complainant’s contentions and did not comply with the Panel’s order to file an English language translation of the short January 6, 2011 letter written in Romanian which it filed with the Center, thus precluding the Panel from considering its contents. As noted above, the language of proceedings is English, the concerned Registrar having confirmed that the registration agreement is in English.
The Complainant bears the onus of proof in relation to the three limbs of the Policy which have to be established. Taking that principle as the starting point, the Panel’s formal findings and reasoning follow.
The Disputed Domain Name plainly includes the Complainant’s primary trademark, VIVISCAL, to which it appends the ordinary English word “products”.
The addition of the word “products” to the Complainant’s VIVISCAL trademark does nothing to alleviate and everything to compound the likelihood that Internet users will be confused about the trade source of any products or services referred to on any website to which the Disputed Domain Name resolves. The Disputed Domain Name is self evidently confusingly similar to the Complainant’s trademark and the Panel so finds.
Absent any explanation from the Respondent as to how it comes to be using the Complainant’s trademark in the Disputed Domain Name, it is hard for the Panel to envisage any legitimate right or interest that the Respondent could have in respect of the Disputed Domain Name, especially given that the website to which the Disputed Domain Name resolves offers products competing with the Complainant’s products. The Panel finds in favour of the Complainant in relation to this leg of the Policy.
Given that the website to which the Disputed Domain Name resolves is offering goods and services that compete with those of the Complainant, it is perfectly clear that the Respondent is passing off its site as being affiliated in some way with the Complainant. As the Complainant notes, the occasional offering of genuine VIVISCAL branded products on the Respondent’s website cannot convert the bad faith registration into good faith use.
Again, the Panel has no difficulty in upholding the Complainant’s submissions on this leg of the Policy and finds that the Respondent registered and is using the Disputed Domain Name in bad faith.
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 <viviscalproducts.com> be transferred to the Complainant.
Philip N. Argy
Sole Panelist
Dated: February 3, 2011