The Complainant is Mölnlycke Health Care AB of Gothenburg, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondents are Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / lee Ben of Seoul, Republic of Korea, self presented; of Yantai, Shandong, China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint involving the disputed domain name was filed against Registration Private, Domains By Proxy, LLC with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2016. On May 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant lee Ben 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 13, 2016 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 including two additional domain names and on May 16, 2016.
On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the newly added disputed domain names and . On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent lee Ben is listed as the registrant for the disputed domain names and and providing the contact details. Although the disputed domain names and are both registered to the Respondent lee Ben, contact details provided by the Registrar for these two disputed domain names appear to be different. In response to a notification by the Center regarding the registrant information, the Complainant filed an amended Complaint on May 19, 2016 including a consolidation request.
The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceeding commenced on May 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2016.
On May 20, 2016, the Center received the Response in relation to the disputed domain name . The signed Respondent "Ben" asserted that he has nothing to do with the disputed domain name .
On June 10, 2016, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 15, 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 A. Complainant
The Complainant is a company founded in 1849 and incorporated in Sweden, and a developer and manufacturer of single-use surgical and wound care products marketed and sold worldwide under the trade mark MEPIFORM (the "Trade Mark"). The Complainant is the owner of several international and national registrations for the Trade Mark, including international registration number 698103 dating from June 11, 1998 (and designating China); and Hong Kong, China registration number 200314726 dating from February 4, 2003. B. Respondents
According to the Response, the signed Respondent Ben appears to be an individual based and/or doing business in Hong Kong, China. C. The Disputed Domain Names
The disputed domain names , and were registered on December 8, 2013, February 17, 2011 and May 14, 2016, respectively. D. Use of the Disputed Domain Names
The disputed domain names were previously resolved to the same Chinese language website which offered for sale and sold, amongst other things, the goods of the Complainant under the Trade Mark (the "Website"). 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith. B. Respondents
The signed Respondent Ben contends that:
- The website at the disputed domain name has been established since 2010.
- MEPIFORM is just a product name and is not a famous trademark in China;
- "We are just a distributor of the company Mölnlycke Health Care AB" in Hong Kong, China. "We are not the official website we are only product sales website.";
- As a distributor of the Complainant, he has right to own the disputed domain name . He has spent "our energy to maintain the site in five years and Expand the market share of products in the Hongkong area." He is in touch with the Complainant to regulate his business; and
- He is not the owner of the disputed domain name . 6. Discussion and Findings 6.1 Consolidation of Respondents
Past UDRP decisions suggest that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve.
In the present proceeding, the same Respondent, lee Ben, is listed as the registrant of all three of the disputed domain names, which also share the same Registrar. The disputed domain names and share the same contact information (including addresses and phone numbers in the Republic of Korea) and the same email. The disputed domain names were all, prior to the filing of the Complaint, resolved to the same Website.
The signed Respondent Ben made no submissions on the question of consolidation of the disputed domain names and , but claimed not to be the owner of the disputed domain name (whilst also asserting that the relevant Trade Mark is MEPIFORM, not MEPIFORMS). The Panel does not find this assertion convincing. The signed Respondent Ben did not provide any explanation as to why the disputed domain name was previously resolved to the same Website as and .
The Panel also considers the fact that the Website is no longer active in respect of all three disputed domain names is a further indication of common control or ownership.
In all the circumstances, the Panel concludes sufficient evidence has been adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names. In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Respondents is procedurally efficient and equitable to all the parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue1. 6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel notes that the Response filed by the signed Respondent Ben referred to and made submissions only in relation to the disputed domain name (whilst, however, not denying the Complainant's assertion that the same Respondent is the owner of or is otherwise exercising common control over the disputed domain name ). The Panel also takes note of the signed Respondent Ben's assertion in the Response that he is not the owner of the disputed domain name .
In light of the findings under paragraph 6.1 above on the question of consolidation of the Respondents, however, the Panel considers it is appropriate to take into account the submissions contained in the Response in order to make findings with respect to all three of the disputed domain names under complaint herein. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The disputed domain names and are identical to the Trade Mark. The disputed domain name is practically identical to the Trade Mark – it contains the Trade Mark in its entirety together with the letter "s".
The Respondent asserts that he has operated the Website for five years and questions why the Complainant did not take action earlier. The Respondent also asserts that the Trade Mark is not famous in Hong Kong, China or China, and that the Website is only operated in Hong Kong, China and China and in Chinese language. The Respondent also poses the question as to when the Complainant registered the Trade Mark in Hong Kong, China and China.
Although the date of registration of the Complainant's relevant trade mark rights is not strictly relevant to the first limb under paragraph 4(a) of the Policy, the Panel notes in any event that the Complainant's registrations for the Trade Mark in Hong Kong, China and China incidentally pre-date the dates of registration of the disputed domain names. Furthermore, whether or not the Trade Mark is famous in Hong Kong, China and China, and indeed the nature and language of the Website, are not relevant to the first limb under paragraph 4(a) of the Policy. The Panel also notes that, in any event, irrespective of the language used on the Website, it is of course accessible to members of the public worldwide.
Accordingly, for the above reasons, the Panel finds that the first element under paragraph 4(a) of the Policy has been made out. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in disputed domain names:
(i) Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which incidentally precede the Respondent's registration of the disputed domain names by several years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the disputed domain names have been used in respect of the Website, which makes unauthorised use of the Trade Mark, in order to offer for sale the Complainant's products, as well as third party cosmetic plastic surgery and other beauty care products and services. Furthermore, the logo prominently featured on the Website is an altered version of the logo used by the Complainant together with the Trade Mark.
The Respondent asserts that he is simply a distributor of the Complainant's goods under the Trade Mark, that the Website does not harm the interests of the Complainant, and that there is a link on the Website to the official website of the Complainant.
The Website does not however contain any disclaimer regarding the relationship between the Complainant and the Respondent, nor is it made clear on the Website that the Website has not been authorised or approved by the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of a respondent:
By using the disputed domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line 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 respondent's website or location.
The Respondent has been using the disputed domain names in respect of the Website, which has not been authorised by the Complainant, and which features prominently the Trade Mark and an altered version of signature logo of the Complainant, and offers for sale the Complainant's goods under the Trade Mark together with unrelated third party cosmetic surgery and beauty care products and services, all without any disclaimer of any relationship with the Complainant. This is clear evidence of bad faith.
The Respondent claims to have expended his energy to expand the market share of the Complainant's products in the Hong Kong, China area, and asks the question "who will compensate us?".
In light of the unauthorised use of disputed domain names via the Website to promote cosmetic surgery and beauty care products, including the unauthorised use of an altered version of the Complainant's signature logo on the Website, the Panel finds that the disputed domain names have been registered and used in bad faith.
Furthermore, the fact that all three disputed domain names are presently inactive does not sit well with the Respondent's assertions of rights and legitimate interests, and of good faith.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy. The Panel therefore finds that the Complaint fulfils the third condition of paragraph 4(a) 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 names , and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 29, 2016
1 The Panel shall refer to the Respondents in the singular for the remainder of this Decision.
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