The Complainant is Coloplast A/S of Humblebaek, Denmark, internally represented.
The Respondent is EER Holdings, Inc. of Sugar Land, Texas, United States of America. 2. The Domain Name and Registrar
The domain name (the “Disputed Domain Name”) is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2012. On September 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 17, 2012, 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 Center verified that the Complaint 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 the Respondent of the Complaint, and the proceedings commenced on September 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2012. The Respondent did not file a formal response by the deadline but did file an informal response with the Center on September 30, 2012.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 17, 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. 4. Factual Background
The Complainant is a Danish company engaged in the business of ostomy care, urology and continence care and wound care. The Complainant owns subsidiaries in 25 countries around the world, including in the United States of America, and employs more than 7,500 people worldwide.
The Complainant is the owner by assignment of the SELF-CATH trade mark, which the Complainant contends was acquired from Mentor Corporation (“Mentor”) in 2006. The Complainant is the registrant of over 10 trade marks in several jurisdictions throughout the world for or incorporating SELF-CATH. The SELF-CATH trade mark has been used in connection with urethral catheters for intermittent self-catheterization since 1975, and was registered as a trade mark in the United States of America in 1978. The Complainant is the registrant of numerous domain name registrations incorporating the SELF-CATH trade mark, including:
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The Respondent is based in the United States of America. The Disputed Domain Name was registered on March 28, 2012. While the Panel has not been provided with a screenshot of the Disputed Domain Name prior to the Complaint being filed, according to the Complainant (which is supported by email correspondence with the Registrar), the Disputed Domain Name used to resolve to a parking page featuring sponsored advertisements. As at the date of this decision, the Disputed Domain Name resolves to a website displaying the message “Sorry! This site is not currently available” (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(i) the Disputed Domain Name is identical to the Complainant’s SELF-CATH trade mark which is protected and used in relation to urethral catheters; and
(ii) the Respondent does not own any trade mark or trade name corresponding to the Disputed Domain Name.
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:
(i) the Respondent registered the Disputed Domain Name long after the Complainant acquired rights in the SELF-CATH trade mark;
(ii) there is no evidence showing that the Respondent is using the Disputed Domain Name for a legitimate noncommercial use. The Respondent is using the Disputed Domain Name for commercial purposes as the Disputed Domain Name resolved to a website containing sponsored links; and
(iii) the SELF-CATH trade mark is a distinctive term.
(c) The Disputed Domain Name was registered and is being used in bad faith:
(i) It is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s rights in the SELF-CATH trade mark as a simple search would have revealed to the Respondent that the Complainant is the owner of the SELF-CATH trade mark;
(ii) the Respondent had the intention of preventing the Complainant from registering the Disputed Domain Name;
(iii) the Respondent showed use and registration in bad faith as it offered to sell the Disputed Domain Name to the Complainant;
(iv) the Respondent’s passive holding of the Disputed Domain Name is equivalent to use in bad faith; and
(v) the Disputed Domain Name was registered and used in bad faith as it resolved to a pay-per-click website containing sponsored links relating to the goods and services of the Complainant’s competitors with the intent to generate income. B. Respondent
A formal Response was not submitted by the Respondent. The Respondent submitted informal submissions to the Center on September 30, 2012 (the “Informal Response”), which have been drawn to the Panel’s attention accordingly. The Informal Response does not contain any evidence to support the Respondent’s allegations.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a formal Response and/or to provide any evidence to support the allegations made in the Informal Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of production lies with the Complainant to show each of the following three elements:
a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the SELF-CATH trade mark on the basis of its various registrations for the trade mark around the world dating from 1978, which it acquired from the previous registrant, Mentor. According to the Complainant’s submissions, this assignment took place in 2006, although the Panel has not been provided with any evidence in relation to the date of assignment.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name is identical to the SELF-CATH trade mark. The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the SELF-CATH trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondent’s rights in the Disputed Domain Name (or lack thereof) based on the Respondent’s use of the Disputed Domain Names in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the SELF-CATH trade mark. The Panel further accepts that the Respondent has not become commonly known by the Disputed Domain Name.
Accordingly the only way for the Respondent to acquire rights or legitimate interests in the Disputed Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Name for legitimate noncommercial purposes or in connection with a bona fide offering of goods or services.
The Panel accepts that prior to the Complainant making a request to the Registrar for the transfer of the Disputed Domain Name on August 20, 2012, the Disputed Domain Name resolved to a website which featured sponsored links promoting the products of the Complainant’s competitors, from which the Respondent presumably derived income. Therefore, the finding of legitimate noncommercial use is precluded.
Paragraph 4(c)(i) of the Policy states that a respondent can demonstrate rights or legitimate interests in a domain name by showing that prior to the complaint being filed it had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. The Panel notes that in the Informal Response, the Respondent contends that it had prepared to use the Disputed Domain Name to sell self catherisation kits. However, despite the Disputed Domain Name having been registered for more than 6 years, the Respondent provided no credible evidence demonstrating any such preparations.
Accordingly, the Panel finds that there is insufficient evidence for the Respondent to assert rights or legitimate interests in the Disputed Domain Name and therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Names in bad faith.
Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a Respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. FA94313). While the Complainant has failed to provide sufficient evidence to show that its SELF-CATH trade mark was well known, the Panel accepts that the Respondent had actual notice of the Complainant’s SELF-CATH trade mark at the time of registering the Disputed Domain Name, on the basis of the Respondent’s own admission in the Informal Response. The Respondent contends that it had acquired verbal authorization from Mentor to use the SELF-CATH trade mark in the Disputed Domain Name on the basis that the Disputed Domain Name would be used to sell Mentor’s products. The Panel notes that the Respondent provided no evidence in support of this contention. In such circumstances, this submission cannot be accepted by the Panel.
The Panel finds that the Respondent used the SELF-CATH trade mark in its entirety with a view to trade on the Complainant’s goodwill in the trade mark (see RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242). The Panel has not been provided with any evidence to suggest that the Respondent has used the Disputed Domain Name in any manner or purpose otherwise than in bad faith.
In addition, following the receipt of a cease and desist letter from the Complainant, the Respondent offered to sell the Disputed Domain Name to the Complainant. Paragraph 4(b)(i) of the Policy states that where the respondent registered a domain name primarily for the purpose of selling the domain name to the complainant for an amount in excess of the respondent’s out of pocket costs, this will be evidence of bad faith. While the Panel is not convinced that the Respondent registered the Disputed Domain Name for the primary purpose of selling it to the Complainant, the Panel is of the view that the Respondent’s refusal to transfer the Disputed Domain Name to the Complainant following receipt of the cease and desist letter was motivated by the sole purpose of making undue profits from selling the Disputed Domain Name to the Complainant, which the Panel considers to be further evidence of the Respondent’s use of the Disputed Domain Name in bad faith.
Prior to the Complainant’s request for the Registrar to transfer the Disputed Domain Name to the Complainant, the Complainant alleged (and the Respondent did not deny) that the Disputed Domain Name resolved to a parking page containing sponsored links to the Complainant’s competitors, which is clear evidence of bad faith use (see Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753; S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394; and Volvo Trademark Holding AB v. Unasi Inc.,WIPO Case No. D2005-0556).
The Panel considers the fact that the Respondent has not used, or shown any demonstrable preparations to use the Disputed Domain Name despite it being registered for some 6 years is further evidence of bad faith on the part of the Respondent. While passive holding in itself is not evidence of bad faith (Indofil Chemicals Company v. Amar Vakil,WIPO Case No. D2006-0792), passive holding, under certain circumstances, may support an inference of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). When examining the entire circumstances of this case, the Panel considers that the Respondent’s passive holding of the Disputed Domain Name is indicative of bad faith. In particular, the Panel notes that by the Respondent’s own admission it was aware of the SELF-CATH trade mark at the time of registering the Disputed Domain Name and that the Respondent has failed to provide any credible evidence of any actual or contemplated good faith use of the Disputed Domain Name.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: October 29, 2012
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