The Complainant is BIOFARMA SAS of Suresnes, France, represented by IP Twins S.A.S., France.
The Respondent is Takuya Jin of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2016. On December 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2016, 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” 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, and the proceedings commenced on December 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2017.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 24, 2017. 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 in this proceeding is BIOFARMA SAS of Suresnes, France. The Complainant affirms that it is part of the Servier Group: the largest independent French pharmaceutical group and the second largest French pharmaceutical group in the world. The group is active in 140 countries and employs more than 21,000 people throughout the world.
The Complainant is, inter alia, the owner of the following trademark registrations:
- French trademark CARDIOSKIN No. 4250629, dated February 18, 2016, designating products and services in international classes 9, 10, 25, 42 and 44;
- European trademark CARDIOSKIN No. 015131097, dated February 22, 2016, designating products and services in international classes 9, 10, 25, 42 and 44;
- International trademark CARDIOSKIN (pending) No. 4250629, filed on August 24, 2016 and dated February 18, 2016 (under Priority), designating products and services in international classes 9, 10, 25, 42 and 44.
The Complainant is also the registrant of the domain name , registered on February 23, 2016.
The disputed domain name was registered on September 13, 2016.
The disputed domain name is used to redirect toward a page where the sole message “ is coming soon” is displayed.
The Complainant’s trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is identical to the Complainant’s CARDIOSKIN registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark CARDIOSKIN.
UDRP panels have generally disregarded the generic Top-Level Domain (“gTLD”) suffix under the confusing similarity test for purposes of the Policy.
If the gTLD suffix from the disputed domain name is removed, the Panel finds that the disputed domain name is identical to the Complainant’s CARDIOSKIN trademark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known by the name “cardioskin” or by a similar name. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Indeed, the disputed domain name is used to redirect to a page where the sole message “ is coming soon” is displayed. Owing to the fact that the Respondent has no connection or affiliation with the Complainant, and that the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark, the Panel can think of no possible legitimate justification for this use, and the Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the CARDIOSKIN mark when he registered the disputed domain name.
An inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent (without proving or even claiming any rights to the disputed domain name) replied to the Complainant’s cease-and-desist letter requesting EUR 5,500 to transfer the disputed domain name to the Complainant. Indeed, owing to the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name he would have at least indicated them. Consequently, the Respondent’s offer for sale of the disputed domain name for price of EUR 5,500, which far exceeds out-of-pocket costs, corresponds to bad faith registration and use pursuant to the Policy.
The Respondent also appears to have registered other domain names incorporating third-party trademarks including:
- , registered on October 31, 2016 and identical to the United States (“US”) Trademark application AMERICAN RIPPER, filed on October 26, 2016;
- , registered on August 29, 2016 and identical to US Trademark application BONUS REVOLUTION, filed on August 24, 2016;
- , registered on August 22, 2016 and identical to, inter alia, US Trademark application DAYBREAK MOOD, filed on August 17, 2016;
- , registered on August 23, 2016 and identical to US Trademark application SEQUOIA SHADE, filed on August 18, 2016;
- , registered on August 23, 2016 and identical to International Trademark application DOUCEUR A PARIS, filed on August 1, 2016;
- , registered on August 29, 2016 and identical to US Trademark application GRATEFUL GRAPES, filed on August 23, 2016;
- , registered on August 23, 2016 and identical to International Trademark application HYGIENE FORMULA, filed on August 10, 2016;
- , registered on August 31, 2016 and similar to, inter alia, International Trademark application MY MELLOW YELLOW PARIS, filed on July 29, 2016;
- , registered on September 8, 2016 and identical to US Trademark application JUST FURR ME, filed on September 1, 2016.
It therefore appears that the Respondent has established a pattern of registering domain names that correspond and/or contain third parties’ trademarks shortly after their application for registration, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy. This pattern of conduct clearly demonstrates bad faith on the part of the Respondent.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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 the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: February 6, 2017
Full & Egal Universal Law Academy