The Complainant is Forest Laboratories UK Limited of Barnstaple, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Matkowsky Law P.C, United States of America.
The Respondent is Hong young jin of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Inames Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details
On October 10, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On October 11, 2016, the Complainant confirmed its request for English to be the language of the proceeding.
The Center verified that 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 the Respondent of the Complaint in both English and Korean, and the proceedings commenced on October 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2016.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 16, 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
The Complainant is the company Forest Laboratories UK Limited, a subsidiary of Actavis plc incorporated in the United Kingdom with a registered office located at Whiddon Valley, Barnstaple, North Devon EX32 8NS.
The Complainant owns multiple registrations for the trademark INFACOL covering pharmaceutical preparations in Class 5 throughout the world, including European Union Intellectual Property Office EUTM Reg. No. 000198739 first filed April 1, 1996, issued June 27, 2000, and Australian Reg. No. 239219, first filed May 22, 1970, registered from May 22, 1970 (the “Trademarks”).
Among other uses, the Complainant uses its Trademarks in connection with its colic relief drops for babies suffering from infant colic.
The disputed domain name was first created March 28, 2000, and as of March 27, 2013, the disputed domain name was owned by the Complainant until it was inadvertently deleted due to lapse in registration, and then registered by the Respondent.
The disputed domain name resolves to a page stating that the website is under construction. It previously resolved to a parking page with sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its Trademarks in which the Complainant has rights.
The Complainant alleges that the disputed domain name is identical to the Complainant’s Trademarks, and that the disputed domain name is likely to generate a risk of confusion in the public.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complaint has not authorized the Respondent to use its Trademarks. The Complainant notes that disputed domain name has been used to redirect to a parking page providing commercial links to colic products and baby products and formulas, including products with the Complainant’s Trademarks.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. As evidence of this bad faith, the Complainant notes that the disputed domain name has been used to redirect to a parking page with commercial links, as well as a landing page in which the disputed domain name is offered for sale for the sum of USD 4,950. The Complainant further notes that the Respondent has a history of registering domain names incorporating the trademarks of third parties. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue: Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and the Complainant submitted its Complaint in English.
In adopting a language other than that of the Registration Agreement, the Panel has to exercise its discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432.
First, the Panel notes that the Respondent has numerous domain names using only the English language, and that the Respondent has registered various domain names subject to English registration agreements. Further, the Panel notes that the disputed domain name which currently resolves to an “under construction” message in English, has been providing commercial links in English for several years. Further, the Panel notes that the Respondent has chosen not to participate in this proceeding. And finally, the Panel notes that the same Respondent was a party to a previous UDRP case, in which the Panel has rendered the Decision in English (see ShopInvest NV v. Hong Young Jin,WIPO Case No. D2015-1224).
For the above-mentioned reasons, the Panel concludes that it will issue a decision in English.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark 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. B. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has demonstrated that it holds several trademark registrations for the term INFACOL which are closely associated with its business activities around the world.
The disputed domain name wholly incorporates the Complainant’s trademark with the addition of the generic Top-Level Domain (“gTLD”) “.com”. It is well established that the addition of the gTLD “.com” is typically without legal significance when comparing the disputed domain name to the Complainant’s trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins,WIPO Case No. D2013-0603; cf., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Further, the disputed domain name incorporates the Complainant’s existing Trademarks. The disputed domain name incorporates the dominant feature of the Complainant’s mark and is, in the Panel’s view, confusingly similar to the Complainant’s mark. See Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd. v. World Photo Video and Imaging Corp.,WIPO Case No. D2001-1464.
For the reasons stated above, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to the Complainant’s Trademarks, and the first element has been established. C. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of production, several past UDRP decisions have held that “once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondents to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent in the present case has chosen to file no response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been established. D. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(ii), includes “you have 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 you have engaged in a pattern of such conduct”. The Panel notes the history of previous UDRP rulings finding against the Respondent. See, e.g., ShopInvest NV v. Hong Young Jin, supra.
Another criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”. The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of paragraph 4(b)(iv) of the Policy. In the present case, the disputed domain name has been linked to a domain parking service in which the disputed domain name is offered for sale, as well as to a parking page with commercial links. The mere fact of diverting users in these misleading manners is evidence of bad faith.
For the reasons given above, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and that the third and final element of the Policy has been established. 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.
Thomas P. Pinansky
Sole Panelist
Date: December 3, 2016
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