Complainant is Sanofi of Paris, France, represented by Selarl Marchais Associés of Paris, France.
Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Iwan Kresnadi of Jakarta, Indonesia. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2016. On April 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 22, 2016, 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 Complainant on April 25, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 27, 2016.
The Center verified that the Complaint together with the amendment to the Complaint (hereinafter the Complaint and the amendment to the Complaint are referred both together as 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 Respondent of the Complaint, and the proceedings commenced on May 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2016. Respondent sent an email communication to the Center on May 2, 2016, acknowledging receipt of the Complaint. No further reply was received by Respondent.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 1, 2016. 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 states that it is “a French multinational pharmaceutical company headquartered in Paris” that is “settled in more than 100 countries on all 5 continents employing 110,000 people.” Complainant further states that it “is the 4th world's largest multinational pharmaceutical company by prescription sales” and that it “engages in research and development, manufacturing and marketing of pharmaceutical products for sale, principally in the prescription market, but the firm also develops over-the-counter medication.”
Complainant further states that it is the owner of a number of trademark registrations around the world for the mark LACTACYD, which it uses in connection with feminine hygiene products and products for babies. In support thereof, Complainant cites, among many others, the following trademark registrations, which it supports with appropriate documentation: International trademark number 231527, registered on April 22, 1940; French trademark number 1469199, registered on June 1, 1988; and Panama trademark number 40230, registered on November 20, 1986. These marks are collectively referred to hereafter as the “LACTACYD Trademark.”
Complainant further states, and provides documentation in support thereof, that it is the registrant of a number of domain names containing the LACTACYD Trademark, including , which was registered on April 8, 1999.
The Disputed Domain Name was created on June 15, 2015, and is being used in connection with a website showing what appear to be baby products bearing the LACTACYD Trademark, along with what Complainant describes as “links which lead Complainant’s consumers to websites which offer competing products in the field of pharmaceutical products and cosmetics.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
The Disputed Domain Name is confusingly similar to the LACTACYD Trademark because the Disputed Domain Name “reproduces the ‘LACTACYD’ trademarks and domain names, which, as themselves, do not have any particular meaning and are therefore highly distinctive”; “where a domain name wholly incorporates a complainant’s well-known and distinctive trademarks in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, a descriptive word”; and “the addition of the descriptive term ‘baby’ to a trademark does not prevent the domain name from being confusingly similar to the trademark” because the word “baby” is “a commonly used term[] in the field of soaps and medicinal products to indicate the intended use, purpose and target of the products, namely babies.”
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “the names ‘Whoisguard Protected’ or ‘Whoisguard Inc.’ which mean nothing, [do] not bear any resemblance with the word ‘LACTACYD’, which has no meaning and is therefore highly distinctive”; “Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks”; “the litigious domain site is clearly used as a bait and switch”; and “Respondent did not reply to the cease and desist letter sent by Complainant on March 23, 2016.”
The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “given the famous and distinctive nature of the mark LACTACYD, the Respondent is likely to have had, at least, constructive, if not actual notice, as to the Complainant’s mark at the time he registered the name,” which “suggests that the Respondent acted with opportunistic bad faith in having registered the name in order to make an illegitimate use of it”; “the domain name has obviously been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion between LACTACYD trademarks and domain names”; “the litigious domain name leads to a competing website insofar as the website displays/offers for sale products unauthorized by the Complainant”; “insofar as the Respondent’s website directly competes with the Complainant’s renowned activities, the Respondent has clearly registered and used the litigious domain name for the purpose of disrupting the Complainant’s business, by displaying commercial linked which redirect Internet users to Respondent’s websites, which constitutes further evidence of its bad faith”; and Respondent did not reply to Complainant’s demand letter. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the LACTACYD Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the LACTACYD Trademark, the relevant comparison to be made is with the second-level portion of this domain name only (i.e., “lactacydbaby”), as it is well established that the generic Top-Level Domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)
The Panel finds that “the dominant portion” of the Disputed Domain Name contains the LACTACYD Trademark and that the addition of the word “baby” is insufficient “to create a distinct domain name capable of overcoming a proper claim of confusingly similar.” F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger,WIPO Case No. D2007-0189. This is especially true because the word “baby” is associated with Complainant’s use of the LACTACYD Trademark. Indeed, because the word “baby” “relate[s] to the Complainant’s business,” it actually “increases the likelihood of confusion between the Domain Name[] and the Complainant’s trademark.” Inter-Continental Hotels Corporation v. Hui Lian Yang/Yang Hui Lian; a/k/a Jian Ren Zhou/Zhou Jian Ren; a/k/a Jian Guo Liu/Liu Jian Guo,WIPO Case No. D2014-0272.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “the names ‘Whoisguard Protected’ or ‘Whoisguard Inc.’ which mean nothing, [do] not bear any resemblance with the word ‘LACTACYD’, which has no meaning and is therefore highly distinctive”; “Complainant has never licensed or otherwise authorized the Respondent to use its trademarks or to register any domain name including the above-mentioned trademarks”; “the litigious domain site is clearly used as a bait and switch”; and “Respondent did not reply to the cease and desist letter sent by Complainant on March 23, 2016.”
Under the Policy, “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 the 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.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the respondent has registered or the respondent 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location or of a product or service on the registrant’s website or location.
Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy because “the contested domain name directs Internet users to a website which is not the official website of Complainant’s products” but instead “displays/offers for sale products unauthorized by the Complainant” – “which suggests an effort to create a likelihood of confusion with the Complainant’s trademarks and domain names as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products displayed/advertised for sale on it.”
Using a domain name that contains a complainant’s trademark in connection with a website that sells competing products is an obvious way to create a likelihood of confusion and has frequently been cited by previous panels as establishing bad faith. See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong,WIPO Case No. D2003-0408 (using a disputed domain name “to sell directly competing products” constitutes bad faith); and Ho Hoi Ming Michael, VGH Solutions (“Dr Ho”) v. EHM All Things Healthy, LLC,WIPO Case No. D2014-1753 (finding bad faith where disputed domain name “wholly incorporates the Trade Mark, and… is almost identical to the Complainant’s own registered domain name and was used to sell similar goods”).
Accordingly, the Panel finds that Complainant has proven 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 be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: June 9, 2016
Full & Egal Universal Law Academy