WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferrosan A/S v. I c/o Whois IDentity Shield / CKV /Domain Admin
Case No. D2007-1747
1. The Parties
Complainant is Ferrosan A/S, a public limited liability company under the laws of Denmark, with its principal place of business in S�borg, Denmark and is represented by Sandel, L�je & Wallberg of Denmark.
Respondent is I c/o Whois IDentity Shield, Vancouver, British Columbia, Canada (at the time of filing of the Complaint) and CKV, Domain Admin, Hong Kong SAR of China (after Registrar’s verification).
2. The Domain Name and Registrar
The disputed domain name is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2007. On November 28, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. Several registrar verification reminders were sent to Nameview Inc. As no reply was received from the registrar, the Center informed Nameview Inc. that it would reluctantly proceed to notify the Complaint on the basis of potentially incomplete information and that it would accept no responsibility in the event of complications resulting from inaccurate or incomplete information. The Center verified that the Complaint together with the supplemental filing satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2008. On January 8, 2008, Nameview Inc. transmitted by email to the Center its verification response confirming that Respondent in the present proceeding is CKV Domain Admin and its contact address. As the Complaint was commenced by Complainant on the basis of the publicly accessible Whois data in the absence of a timely reply from the Registrar, Complainant was invited by the Center to file a supplemental filing. In response to the Center’s invitation, Complainant filed a supplemental filing on January 28, 2008. Respondent was requested to indicate by January 28, 2008 if it intended to file a Response. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 30, 2008.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 18, 2008. 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
Complainant is a pharmaceutical company incorporated in Denmark since 1920 and it is in the business of producing and distributing food supplements and cosmetics among others on a world wide basis. Complainant has subsidiary companies around the world including the United States of America.
Complainant is the producer of a pharmaceutical product sold under the trade mark IDOFORM. The product is a combined probiotic for adults and children that can be used during pregnancy and lactation periods and by people who suffer from milk, gluten and lactose intolerance as well as diabetics. Complainant is the owner of the IDOFORM trade mark which is protected by trade mark registrations in 27 countries in the world including the following:
- Canadian trade mark registration no. 387,470, registered on August 9, 1991, for “preparations for use in regulating the intestinal flora, including for use in relieving constipation and diarrhoea” in international class 5;
- Danish trade mark registration no. VR 1990 04834, registered on July 13, 1990 for, inter alia, “preparations for use in regulating the intestinal flora, including for use in relieving constipation and diarrhoea” in international class 5;
- Community trade mark registration no. 003501591, registered on March 22, 2005 for inter alia, “pharmaceutical, veterinary and sanitary preparations; naturopathic preparations including naturopathic preparations based on active ingredients from plants and/or animals, including shell fish, weed and sea-weed; food supplements for healthcare and medical purposes, also in liquid form, including shell fish, weed and seaweed; vitamin-and mineral preparations, dietetic substances adapted for medical use; food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; preparations for destroying vermin; fungicides, herbicides” in international class 5.
Complainant is also the holder of the domain names and .
Complainant commenced the present proceedings on the basis of the publicly accessible Whois data and according to the information in the Whois data, the disputed domain name was created on September 28, 2003. According to the information in the Whois data, the registrant of the disputed domain name (and thus Respondent to the present proceeding) is I c/o Whois IDentity Shield, Vancouver, British Columbia, Canada. On October 9, 2007, shortly after Complainant discovered that the contested domain name was registered by the Respondent, Complainant’s representative wrote to Respondent on behalf of Complainant demanding that the disputed domain name be transferred to Complainant. The letter was communicated to Respondent by ordinary mail and by email. On January 8, 2008, the Registrar finally responded to the Center’s request for verification of Respondent’s identity and contact information and it transpired that the Respondent to the present proceeding is CKV, Domain Admin, Hong Kong, SAR of China. Thereafter, Complainant filed a supplemental filing on January 28, 2008.
5. Parties’ Contentions
A. Complainant
Identity of Respondent(s)
On January 8, 2008, the Registrar finally responded to the Center’s request for verification of Respondent’s identity and contact information and it transpired that the Respondent to the present proceeding is CKV, Domain Admin, of Hong Kong, SAR of China. Thereafter, Complainant filed a supplemental filing on January 28, 2008 and submits that in accordance with previous UDRP decisions, in particular, Siemens AG v. Joseph Wunsch/C,WIPO Case No. D2006-1248, it is appropriate to allow the original registrant according to Whois data as provided by the Registrar to remain as Respondent in the present proceeding.
Identical or Confusingly Similar
Complainant asserts that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights. Complainant is the holder of the trade mark IDOFORM registered in 27 countries in the world, more than 12 years prior to the creation of the disputed domain name. The disputed domain name incorporates the mark IDOFORM and is thus identical to the earlier trade mark rights held by Complainant.
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:
- There is no evidence of Respondent’s use of, or demonstrable preparations to use with an offering of goods or services in good faith;
- Respondent’s website at “www.i” only provides links to other websites and appears to be a multi-area search portal. A website of such a nature which merely redirect Internet traffic to other websites not legitimately associated with Complainant or its registered trade mark does not constitute a bona fide offering of goods or services;
- Complainant has not authorized or licensed Respondent’s use of the IDOFORM trade mark on or in connection with Respondent’s website;
- “Idoform” has no meaning and it an artistically invented composition and is not obvious or suggestive in any way for multi-purpose search portals. Thus, no traders would legitimately choose this composition unless seeking to create an impression of an association with Complainant;
- There is no evidence that Respondent has made any legitimate use of “Idoform” as a trade mark or service mark, nor is there any evidence that Respondent is commonly known as “Idoform”.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name has been registered and used in bad faith by Respondent on the following grounds:
- The fact that Respondent’s website at “www.i” only provides links to other websites and appears to be a multi-area search portal within very different topics such as legal forms, loans, impotence, erectile dysfunction remedy and patent applications and the fact that Complainant’s trade mark IDOFORM appears quite dominantly on the website’s upper right hand side when most topics on the website relates to products or services far from the pharmaceutical product sold under the trade mark IDOFORM, clearly indicates that Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s trade mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location;
- Complainant is the holder of a wide range of trade mark registrations for IDOFORM and Respondent by registering the disputed domain name intentionally prevented Complainant from reflecting its trade mark in a corresponding domain name;
- Panelists in previous UDRP decisions involving the respondent or a respondent having the identical c/o name of “c/o WHOIS Identity Shield” have ordered the disputed domain names to be transferred to the complainants and these decisions clearly suggest that the respondent or the effective holder of the disputed domain name has engaged in a pattern of conduct which entails registration of domain names for the purpose of preventing owners of intellectual property rights from reflecting their rights in a corresponding domain name. Given the pattern of conduct of a respondent having the identical c/o name of “c/o WHOIS Identity Shield”, Complainant contends that Respondent also having a “c/o WHOIS Identity Shield” name has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of out-of-pocket expenses. Given all these circumstances, it is clear that Respondent has registered and is using the disputed domain name in bad faith; and
- Complainant asserts that the Registrar, Nameview, has in previous UDRP cases performed an unusual practice in which the name and contact details of the registrant record are sometimes changed (apparently after receiving notice of the complaint) to reflect those of the complainant. Panelists in other cases have commented that the Registrar’s conduct of modifying registrant data to reflect those of the complainant undoubtedly complicate and in some cases may frustrate proceedings. Complainant contends that the prior conduct of the Registrar, Nameview, in former UDRP cases coupled with the delay in response to the Center’s request for verification of Respondent’s details suggest a general lack of willingness to comply with the Policy and Rules which must clearly indicate bad faith in relation to Respondent.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Identity of the Respondent(s)
The Panel finds that the proper respondent in this administrative proceeding is the registrant of the disputed domain name as reflected in the Whois database of the Registrar. Accordingly, the Respondent is I c/o Whois IDentity Shield, Vancouver, British Columbia, Canada (at the time of filing of the Complaint) and CKV, Domain Admin, Hong Kong, SAR of China (after Registrar’s verification).
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. the respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark IDOFORM in many countries throughout the world. The Panel finds that Complainant has rights in the mark IDOFORM.
In assessing the degree of similarity between Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about Complainant’s pharmaceutical products sold under the trade mark IDOFORM.
The disputed domain name is constituted by (a) an exact reproduction of Complainant’s trademark IDOFORM and (b) the suffix ‘.com’. It is an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trade mark.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP Panel decisions that once a Complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to Respondent to rebut Complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “idoform” in its business operations;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trademark IDOFORM or to apply for or use any domain name incorporating the trademark;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services. The nature and content of Respondent’s website at “www.i” which offers a multi-area search portal in widely different topics cannot possibly constitute evidence that Respondent is using the disputed domain in good faith for the genuine offering of goods or services over the Internet;
4. There is no evidence to show that Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark IDOFORM at issue; and
5. Complainant and its trademark IDOFORM enjoy a worldwide reputation with regard to its pharmaceutical products. Consequently, in the absence of contrary evidence from Respondent, the trademark IDOFORM is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark 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) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
To find bad faith on the part of Respondent and to order a transfer of the disputed domain name to Complainant under the present proceeding, Complainant must discharge its burden of proof under the Policy that Respondent has registered and used the domain name in bad faith. This commonly includes among other things showing that a respondent had knowledge of a complainant and its trade mark rights prior to or at the time of registration/acquisition of the disputed domain name. Previous panels have recognized that in the absence of clear evidence that a respondent had actual knowledge of a mark, certain inferences may be drawn in terms of likely knowledge from inter alia the fame of a complainant’s mark.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
First, the Panel finds that Complainant enjoys a worldwide reputation in its IDOFORM mark and the pharmaceutical products sold under this trade mark. Complainant’s IDOFORM mark has been registered and was used in relation to its pharmaceutical products since 1990 and the Panel accepts Complainant’s assertion that the IDOFORM mark has attained a worldwide reputation in probiotic medications for adults and children. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Given the fame of Complainant’s IDOFORM mark, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the IDOFORM trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services.
Second, Complainant has also adduced evidence to prove that by using confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website which are hosting advertising links to websites promoting or offering a wide range of products or services of third parties, some in the pharmaceutical field but also include many others which are far removed from the pharmaceutical field. Respondent also liberally applied Complainant’s trade mark on the website when most of the topics on the website relates to products or services far from the pharmaceutical product sold under the trade mark IODFORM. Given the worldwide reputation and the fame of Complainant’s IODFORM trademark, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is identical or confusingly similar to Complainant’s widely known and distinctive trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the Respondent’s websites are either Complainant’s site or the site of official authorized partners of the Complainant, which it is not. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s IDOFORM trademark and this constitutes a misrepresentation to the public that the Respondent’s websites are in one way or the other associated or connected with Complainant’s. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the websites on to which the domain name resolve are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
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, be transferred to Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: March 3, 2008
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