WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merz Pharma GmbH & Co. KGaA and Ulthera Inc. v. Darryl Louis, Med Auction Inc.

Case No. D2018-2377

1. The Parties

The Complainants are Merz Pharma GmbH & Co. KGaA (“Merz” or “First Complainant”) of Frankfurt, Germany and Ulthera Inc. (“Ulthera” or “Second Complainant”) of Mesa, Arizona, United States of America (“United States” or “US”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Darryl Louis, Med Auction Inc. of San Diego, California, United States.

2. The Domain Names and Registrar

The disputed domain names <newulthera.com>, <new-ultherapy.com>, <ultheracost.com>, <ultherafacelift.com>, <ultheraforsale.com>, <ultheralaser.com>, <ultheramachine.com>, <ultheramerz.com>, <ultheraprice.com>, <ultherapybeforeandafter.com>, <ultherapycosts.com>, <ultherapymachine.com>, <ultherapymerz.com>, <ultherapyreview.com>, <ultherapyreviews.com>, <ultherapytransducers.com>, <ultherapyultrasound.com>, <ultherareview.com>, <ultheraskintightening.com>, <ultheratransducer.com>, <ultheratransducers.com>, <ultheraultrasound.com>, <used-ulthera.com>, <usedultherapy.com> (the “Disputed Domain Names”) are 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 18, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Respondent sent informal email communications to the Center on October 19, 2018, and October 22, 2018.

The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties the commencement of panel appointment process on November 15, 2018. The Respondent sent an informal email communication to the Center on November 16, 2018.

The Center appointed John Swinson as the sole panelist in this matter on November 22, 2018. 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 First Complainant, Merz, is a German corporation based in Frankfurt. The First Complainant operates a global business focused on medical aesthetics and neurotoxin therapy. The Second Complainant, Ulthera, is a wholly-owned subsidiary of Merz, which owns beauty brands Ultherapy and Ulthera.

In 2017, Merz had a reported revenue of more than EUR 1.02 billion, and currently employs about 3,000 employees in 34 locations worldwide.

The Complainants own several registered trade marks which comprise or incorporate the terms MERZ, ULTHERA and ULTHERAPY (the “Trade Marks”). The relevant Trade Marks are:

The Respondent, Darryl Louis of Med Auction Inc. has a registered address in San Diego, California, United States. No formal response was received from the Respondent and consequently little information is known about the Respondent. The Respondent sent an informal email communication to the Center stating that “he sent a dispute” but no further communication was received.

All but two of the 24 websites at the Disputed Domain Names lead to websites which refer directly to the Complainants’ ULTHERAPY trade mark and promote information related to the Complainant’s products and links to auction sites selling the Complainants products. The website at the Disputed Domain Name <newulthera.com> currently leads to a parking page. The website at the Disputed Domain Name <ultheraprice.com> leads to a site which promotes the Complainant’s products but does not have functioning links.

The Respondent registered the Disputed Domain Names in the period between July 29, 2015 and August 4, 2017.

5. Parties’ Contentions

A. Complainant

The Complainants make the following submissions:

Identical or Confusingly Similar

The Disputed Domain Names are identical or confusingly similar to the Trade Marks. Specifically:

- two of the Disputed Domain Names incorporate the Trade Marks in their entirety; and

- 22 of the Disputed Domain Names have generic terms like “new”, “cost”, “laser”, “machine”, “price” and “review” either before or after the Trade Marks, to create the confusing similarity, especially with some of the terms being closely related to the Complainants’ beauty business.

Rights or Legitimate Interests

The Respondent is not sponsored by or affiliated with the Complainants in any way. The Complainants have not licensed, authorized or permitted the Respondent to use the Trade Marks. Further, the Respondent is not known by the Disputed Domain Names.

The Respondent is not making a bona fide offering of goods or services or a legitimate, noncommercial fair use of the Disputed Domain Names. Specifically:

- the Respondent is selling the Complainants’ Ulthera beauty treatment equipment without the Complainants’ authorization and is directly competing with the Complainants’ business;

- the Respondent has continued to register 24 confusingly similar domain names over 3 years to corner the market and deprive the Complainants of their rights in the Trade Marks; and

- the Respondent has intentionally used metadata search terms to confuse and direct Internet users searching for the Complainants’ Trade Marks to the Respondent’s websites at the Disputed Domain Names.

Further, with regard to <newulthera.com> the Respondent has failed to make legitimate use of the Disputed Domain Name as it leads to a site with no content.

Registered and Used in Bad Faith

The Respondent registered the Disputed Domain Names in the period between July 29, 2015 and August 4, 2017, which is after the Complainants’ registration of the Trade Marks.

The Respondent has registered the Disputed Domain Names to attract, for commercial gain, Internet users to the Disputed Domain Names, by creating a likelihood of confusion with the Trade Marks.

The websites at the Disputed Domain Names display descriptions about the Complainants’ Ultherapy treatment. Further, the Respondent is offering the Complainants’ Ulthera equipment without the Complainants’ authorization. By using such direct references to the Complainant and the Trade Marks, it is clear that the Respondent would have been aware of the Trade Marks when registering the Disputed Domain Names. The Respondent has a pattern of engaging in cybersquatting in relation to other brands.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and

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

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The onus of proving these elements remains on the Complainants even though the Respondent has not filed a Response.

A. Procedural Issues

Consolidation

The Complaint is made on behalf of the two Complainants in relation to 24 domain names. Under paragraph 10(e) of the Rules, the Panel finds that it is equitable and procedurally efficient to consider the issues in the single Complaint given the Complainants are clearly related entities and share a common grievance against the Respondent (see section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel accepts that each Complainant owns Trade Mark registrations relevant to the Disputed Domain Names. The Panel permits both parties to be joint Complainants for the following reasons:

- two of the Disputed Domain Names incorporate a combination of Trade Marks owned by each Complainant;

- the majority of the websites at the Disputed Domain Names have a similar look and feel; and

- all of the websites are controlled by the same Respondent.

Response

The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a formal Response.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Names are identical or confusingly similar to a trade mark in which the Complainants have rights.

The Panel finds that all Disputed Domain Names are confusingly similar to the Trade Marks. The Disputed Domain Names <ultheramerz.com> and <ultherapymerz.com> incorporate a combination of the Trade Marks in their entirety. The remaining 22 Disputed Domain Names add generic or descriptive terms such as “new”, “cost”, “laser”, “machine”, “price” and “review” either before or after the Trade Mark.

The added terms are not sufficient to distinguish the respective Disputed Domain Name from the Trade Marks. The Trade Marks are recognizable in all of the Disputed Domain Names.

The Panel finds that the Disputed Domain Names are confusingly similar to the Trade Marks. The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

In this case, the Respondent is using 22 of the Disputed Domain Names for websites which advertise the Complainants’ products and with links diverting Internet users to an auction website “medauction.com”. The Respondent in the proceeding is Darryl Louis, Med Auction Inc. and the contact address used on <medauction.com> is San Diego, the same as the Respondents address. Therefore, whilst not clear from a WhoIs search, the Panel is prepared to infer that the Respondent also controls <medauction.com>. The <medauction.com> website offers a variety of products for sale, including the Complainants’ products.

This is not consistent with a legitimate purpose as the Respondent is using the Trade Marks to divert Internet users to his own site for commercial gain. Therefore, the Respondent is not using these Disputed Domain Names in connection with a bona fide offering of goods or services, nor has he made a legitimate noncommercial or fair use of these Disputed Domain Names.

The websites at some of the Disputed Domain Names (for example, <ultheracost.com>, <ultherafacelift.com>, and <ultheraforsale.com>) make clear that the Respondent is not an authorized reseller of the Complainants’ products. These websites include disclaimers stating that the website operator is “not affiliated with Ulthera Corporation”.

In certain circumstances, a third party may legitimately sell a trade mark owner’s products using a domain name which incorporates the relevant trade mark without the trade mark owner’s permission (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) and the test set out in that decision). However, in this case the Respondent’s use of the Disputed Domain Names does not meet the Oki Data test as the Respondent is not using the site only to sell the trade marked goods. Further, the Respondent’s registration of 24 Disputed Domain Names is evidence that the Respondent is trying to corner the market. Therefore, the Respondent would not meet the narrow exception of the Oki Data test.

One of the Disputed Domain Names, <ultheraprice.com>, leads to a site which promotes the Complainant’s products and contains blog posts but does not have functioning links. One of the Disputed Domain Names, <newulthera.com>, leads to a website with no content.

In addition, the Panel notes that the Disputed Domain Names consist of the Trade Marks (at the second-level). The Panel considers that such composition implies a risk of affiliation, sponsorship or endorsement by the Complainants (see section 2.5.1 of the WIPO Overview 3.0).

Considering the above, the Panel finds that the Complainants have made out a prima facie case. This finding is based on the following:

- The Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services, nor has he made a legitimate noncommercial or fair use of the Disputed Domain Names.

- The Complainants have not licensed or otherwise authorized the Respondent to use the Disputed Domain Names.

- The Respondent has not been commonly known by the Disputed Domain Names nor does he have any registered or common law rights in the Disputed Domain Names.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain.

The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainants has not been rebutted and the Complainants succeed on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

The Panel accepts the Complainants’ submission that it is highly likely the Respondent registered the Disputed Domain Names with the Complainants in mind, given the Respondent is reselling used equipment manufactured by the Complainants and branded with the Trade Marks. The Complainant registered the first of its Trade Marks in 1979. The Respondent registered the first Disputed Domain Name in 2015. The Respondent has registered the Disputed Domain Names 36 years after the first of Complainants’ Trade Marks were registered.

The Panel accepts that the Complainants have a strong reputation in the Trade Marks in the medical aesthetic or beauty sector. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself, in such circumstances, create a presumption of bad faith (see section 3.1.4 of the WIPO Overview).

The Respondent’s websites clearly display descriptions about the Complainants’ Ultherapy treatment and divert Internet users to the Respondent’s auction site to sell a variety of products. The Respondent has registered 24 Disputed Domain Names which incorporate the Trade Marks. It therefore appears that the Respondent has engaged in a pattern of conduct of registering domain names confusingly similar to the Trade Marks.

Panels have found a pattern of abuse where a respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners (see section 3.1.2 of WIPO Overview 3.0). This is evidence of bad faith registration and use under paragraph 4(b)(ii) of the Policy.

Taking into account the Complainants’ reputation and the pattern of the Respondent registering similar domain names targeting the Trade Marks, the Panel considers that the Respondent is intentionally attempting to attract, for commercial gain users to its website by creating a likelihood of confusion with the Trade Mark, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

This conclusion is supported by the content of the websites at the Disputed Domain Names at the time the Complaint was filed, the majority of which divert Internet users to the Respondent’s auction website. By using the Trade Marks in the Disputed Domain Names, the Panel reasonably considers that the Respondent is trading off the Complainant’s goodwill in the Trade Marks in a “bait and switch” move to divert Internet traffic to the Respondent’s auction website. The fact that one of the Disputed Domain Names does not resolve to an active website and that another Disputed Domain Name resolves to a parking page does not prevent a finding of bad faith.

In light of the above, the Panel finds that the Complainants have succeeded on the third element of the Policy in respect of each of the Disputed Domain Names.

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 Names <newulthera.com>, <new-ultherapy.com>, <ultheracost.com>, <ultherafacelift.com>, <ultheraforsale.com>, <ultheralaser.com>, <ultheramachine.com>, <ultheramerz.com>, <ultheraprice.com>, <ultherapybeforeandafter.com>, <ultherapycosts.com>, <ultherapymachine.com>, <ultherapymerz.com>, <ultherapyreview.com>, <ultherapyreviews.com>, <ultherapytransducers.com>, <ultherapyultrasound.com>, <ultherareview.com>, <ultheraskintightening.com>, <ultheratransducer.com>, <ultheratransducers.com>, <ultheraultrasound.com>, <used-ulthera.com>, <usedultherapy.com> be transferred to Complainants.

John Swinson
Sole Panelist
Date: December 11, 2018