Obagi Holdings Company Limited v Alex Bronstein, Videocites ID Ltd

WIPO Case No. D2024-5332

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Obagi Holdings Company Limited v. Alex Bronstein, Videocites ID Ltd

Case No. D2024-5332

1. The Parties

The Complainant is Obagi Holdings Company Limited, Cayman Islands, United Kingdom (“UK”), represented by MSA IP – Milojevic Sekulic & Associates, Serbia.

The Respondent is Alex Bronstein of Videocites ID Ltd, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <obagi.site> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2024. On December 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2024, 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 (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 2, 2025, 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 January 5, 2025.

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 January 8, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 28, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 31, 2025.

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The Center appointed Rebecca Slater as the sole panelist in this matter on February 4, 2025. 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 Complainant is a global skincare company headquartered in the UK. It was founded in 1988. The countries.

The Complainant holds registrations for the OBAGI trade mark, including:

-	Vietnam Trade Mark Registration No. 4-0106470-000, registered August 4, 2008 (OBAGI word mark);
and

- International Trade Mark Registration No. 1495947A, registered July 31, 2019 (OBAGI device mark).

The Complainant’s affiliated companies also hold registrations for the OBAGI word mark, including European
Union Trade Mark No. 000164509 (registered July 10, 1998), European Union Trade Mark No. 001164599
(registered March 2, 2001), US Registration No. 2203028 (registered November 10, 1998) and US
Registration No. 2786594 (registered November 25, 2003).

The trade marks listed above will be collectively referred to as the “Trade Mark”.

The Complainant also operates the <obagi.com> domain name (registered January 26, 1998).

The Respondent is Alex Bronstein of Videocites ID Ltd, located in the US. The Respondent did not submit a response, and consequently little information is known about the Respondent.

The disputed domain name was registered on December 8, 2024.

The Complainant provided evidence that the disputed domain name previously resolved to an active website that appeared to offer various goods at discounted prices, including products featuring the Trade Mark. The website displayed a copyright notice referencing the Complainant’s affiliate company. The Complainant also provided evidence that mail exchange (“MX”) records were configured in respect of the disputed domain

name. The Complainant sent the Respondent cease and desist letters in relation to the disputed domain

name on December 18, 2024.

The disputed domain name currently resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- The disputed domain name is identical to the Trade Mark. The disputed domain name incorporates

the Trade Mark without any additional terms. The Top-Level Domain (“TLD”) “.site” is a standard registration
requirement and should be disregarded from the test.

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- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The

Respondent is not affiliated with or related to the Complainant and has not authorized by the Complainant to use the Trade Mark. The Respondent has not demonstrated use of the disputed domain name for a bona fide purpose. The Respondent used the disputed domain name to resolve to a website that impersonated the Complainant’s official website, featuring the Complainant’s logo and offering discounted products for sale. Visitors to the site were asked to provide their personal information. Additionally, MX records were configured in respect of the disputed domain name, representing a risk of phishing activities. The Respondent is not commonly known by the disputed domain name and has no relevant trade mark rights.

- The Trade Mark has been in existence for over 35 years and is well-known. It is implausible that the Respondent was unaware of the Complainant when the Respondent registered the disputed domain name. This indicates opportunistic bad faith. The use of a privacy shield also supports an inference of bad faith, as does the use of false contact information. The Respondent has also used the disputed domain name to

impersonate the Complainant and potentially for phishing activities. Such illegal use of a domain name
constitutes bad faith. The current passive holding of the disputed domain name does not preclude a finding

of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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

- the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the Trade Mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The disputed domain name contains the TLD “.site”. This is viewed as a standard registration requirement
and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section

1.11.1.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Complainant has not authorized the Respondent to use the Trade Mark and there is no evidence that the Respondent has ever been known by the disputed domain name.

Additionally, the evidence provided by the Complainant (i.e. the website copying the Complainant’s official website and the configuration of MX records for the disputed domain name) indicates that the disputed domain name may have been used to perpetrate a fraudulent scheme. Panels have held that the use of a domain name for illegitimate activity (here, impersonation of the Complainant and potentially phishing) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds it unlikely that the disputed domain name was registered without knowledge of the website at the disputed domain name to host a website with the look and feel of the Complainant’s website (including featuring the Complainant’s logo mark and content copied from the Complainant’s website) to offer items for sale; and (b) the configuration of MX records for the disputed domain name.
Complainant and the Trade Mark, given the longstanding reputation of both the Complainant and the Trade
Mark. The Respondent’s goal in registering and using the disputed domain name appears to be to attract
Internet users for potential gain by taking unfair advantage of and creating a likelihood of confusion with the

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Additionally, panels have held that the use of a domain name for illegitimate activity (here, impersonation of the Complainant and potentially phishing) constitutes bad faith. WIPO Overview 3.0, section 3.4. In the circumstances, the use of a privacy service further supports an inference of bad faith. WIPO Overview 3.0, section 3.6.

The Panel finds that the Complainant has established the third element 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 <obagi.site> be transferred to the Complainant.

/Rebecca Slater/
Rebecca Slater
Sole Panelist
Date: February 10, 2025