The Complainant is Biofarma of Suresnes, France, represented by Salans FMC SNR Denton Europe, AARPI, France.
The Respondent is Whoisguard Protected of Panama, Panama / Bioelite Vert S.R.L., Razvan Mihaiu of Brasov, Romania, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2014, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2014 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 May 6, 2014.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. Apart from two emails from the Respondent received on of May 2, 2014 and May 8, 2014 no formal Response was filed with the Center.
The Center appointed Mladen Vukmir as the sole panelist in this matter on June 12, 2014. 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 Panel has determined the following non-contested facts.
(i) the disputed domain name was registered on September 12, 2013 with the Registrar (Annex 1);
(ii) the Registrar disclosed that the Respondent Bioelite Vert S.R.L., Razvan Mihaiu is the registrant of the disputed domain name (the Registrar’s email transmitted to the Center on April 24, 2014);
(iii) the Complainant is the owner of the international registration No. 452179 of the word trademark DETRALEX in class 5 pharmaceutical, veterinary and sanitary products, etc., registered on April 28, 1980 with numerous designations, including Romania (Annex 7);
(iv) the Complainant is the owner of several domain name registrations incorporating its trademark, particularly, registered in 2005, registered in 2001 and registered in 2007, etc. (Annex 8). 5. Parties’ Contentions A. Complainant
The Complainant, essentially, asserts that:
(i) it is a company belonging to Servier SAS, a major international pharmaceutical group created in 1954 and having offices throughout the world (Annex 5);
(ii) it owns several DETRALEX word and device trademarks, including IR 452179 registered in class 5 for pharmaceutical products and covering Bulgaria, Croatia, Hungary, Romania, Russian Federation, Slovenia, Slovakia and Ukraine, since 1980 (Annex 7);
(iii) it owns numerous domain name registrations based on its DETRALEX trademark, such as , , , , , , , etc. (Annex 8);
(iv) the disputed domain name is identical to the Complainant’s DETRALEX trademark registrations, thus creating a likelihood of consumer confusion;
(v) the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant denies any affiliation with the Respondent or any trademark use rights granted to the Respondent, because the Respondent was aware of the Complainant’s well-known trademark at the time of the disputed domain name registration and because the Respondent registered the disputed domain name with the intention to divert consumers and to prevent the Complainant from reflecting its trademark in a corresponding domain name;
(vi) the disputed domain name was registered and used in bad faith by the Respondent, because the Respondent (a) had no authorization from the Complainant as the pertinent trademark owner, (b) was aware of the Complainant’s prior DETRALEX trademarks and (c) intentionally attempted to dishonestly attract for commercial gain Internet users and consumers. B. Respondent
The Respondent, in its email of May 8, 2014, essentially, asserts that it does not use the disputed domain name in bad faith, because the information pertaining to the Complainant’s product protected by the Complainant’s subject matter trademark DETRALEX is published on the website operated under the domain name, allegedly for the purpose of providing “a public service” to the Complainant’s customers. Further, the Respondent states that it has temporarily removed links to the third party websites, which the Complainant finds infringing. Finally, the Respondent has added a notice that its website operated under the disputed domain name is “not related in any way with Laboratoires Servier”. 6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Respondent’s emails of May 2, 2014 and May 8, 2014, which, in absence of the formal Response, the Panel shall regard as the Response, as well as the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:
“(i) the domain name is confusingly similar to trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith”. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of a number of DETRALEX trademarks registered worldwide, including Romania, where the Respondent is located. Furthermore, the Complainant’s subject matter trademarks have been extensively used on the Internet through numerous domain name registrations, including, , , and .
It is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”)).
It is evident that the disputed domain name incorporates the Complainant’s trademark in its entirety and contains no additional terms.
On the subject of any generic Top-Level Domain (“gTLD”) suffix in a domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of WIPO Overview 2.0). Therefore, the suffix “.net” in the disputed domain name cannot be taken into account as a distinctive element. See The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. 95491).
Accordingly, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e. that the disputed domain name is identical to its DETRALEX trademark, which the Respondent failed to challenge or at least explain. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant […]”. See, e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455: “The Panel will have to establish whether the Complainant’s prima facie case meets the requirements of paragraph 4 of the Policy.”
In the subject matter case, the Complainant has established that it is the owner of a number of word and device trademarks DETRALEX registered in various jurisdictions around the world, including Romania, for over 30 years, as well as that they have extensively used the same trademarks on the Internet. The Complainant also state that it has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of its trademark in the disputed domain name.
The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the records, between the Respondent and the Complainant.
Further, the Respondent failed to substantiate that it has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. On the contrary, the Respondent’s informal Response to the Complaint indicates that it was the Respondent’s original intent to use the Complainant’s trademark in order to attract consumers to its website in order to achieve commercial gain. The Panel finds that such use can be considered neither fair nor legitimate.
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent failing to produce any arguments, much less evidence to the contrary. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
“(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location”.
The Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the service on the Respondent’s website. It can be concluded from the Respondent’s informal Response to the Complaint that, at the time of the domain name registration and throughout the use thereof, the Respondent was aware of the Complainant, its trademarks and the Complainant’s business. Namely, the Respondent, in its Response, inter alia, states the following: “…despite the fact that Detralex is a “famous trademark”, BioPharma has not created a page for the product which should contain at a minimum the prospectus for the product. Providing this information is a public service and it is obvious that Biopharma is not interested in helping its’ clients with this.”
The above cited statement indicates that the Respondent’s intention was to use the Complainant’s well-known trademark for the Respondent’s own benefit by attracting Internet users to the website under the disputed domain name. The Respondent’s contention that the services provided by means of the website at the disputed domain name were aimed at helping the Complainant’s clients find information about the Complainant’s product cannot be supported by the Panel, taking into account the exclusive rights the Complainant enjoys on the basis of its trademark registration and the Respondent’s commercial and confusing use of the disputed domain name. Hence, by registering the disputed domain name and operating the website at the disputed domain name, the Respondent has been trading off the Complainant’s reputation and goodwill in its trademark, whereby the disputed domain name registration and use by the Respondent may not be deemed bona fide.
Further, the Complainant is the registrant of numerous gTLD and ccTLD domain names based on its trademark DETRALEX, including the , and domain names that were registered before the disputed domain name, which makes it likely that, at the time of registration of the disputed domain name, the Respondent was aware of the Complainant’s DETRALEX based domain name registrations and seized the opportunity to register the disputed domain name available at the time in order to trade on the renown of the Complainant’s trademark.
Finally, although the Respondent states that it has added a notice that its website operated under the disputed domain name is “not related in any way with Laboratoires Servier”, as well as temporarily removed links to the third party websites, which the Complainant finds infringing, the Panel deems that such measures are not sufficient to cure the Respondent’s bad faith conduct. See, e.g. ISL Worldwide and The Federal Internationale de Football Association .v. Western States Ticket Service,WIPO Case No. D2001-0070: “The Panel does not find the Respondent’s Disclaimer effective for the purposes of either paragraph 4(a)(i) or 4(a)(iii) of the Policy. It is tantamount to committing a tortuous act but then seeking to avoid liability after the event. It is only by unauthorised use of the trademark that the potential customer is brought to the website (containing the disclaimer) in the first place.”
Therefore, the Panel finds that by the Respondent’s registration and use of the disputed domain name Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Accordingly, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: June 29, 2014
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