Complainant is Les Laboratoires Servier of Suresnes Cedex, France, represented by IP Twins S.A.S., France.
Respondent is Huang Ru Wei of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2017. On March 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on April 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 1, 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
Complainant in this administrative proceeding is Les Laboratoires Servier, an independent French pharmaceutical company, operating on a global level. Complainant is the holder of trademark registrations across various jurisdictions for the word mark SERVIER. Complainant’s trademark portfolio includes, inter alia, the following trademark registrations:
- SERVIER, international word mark registered with the World Intellectual Property Organization (“WIPO”) under No. 814214 on August 5, 2003 in classes 5, 35, 41, 42 and 44;
- SERVIER, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 004279171 on October 15, 2007 in classes 5, 35, 41, 42 and 44;
, international trademark registered with WIPO under No. 897311 on August 18, 2006 in classes 42 and 44.
Complainant uses its SERVIER trademark in connection with its international pharmaceutical business, such as the offering of pharmaceutical products, the provision of medical services and information, etc.
The Disputed Domain Name was registered on December 29, 2016. The Disputed Domain Name does not currently revolve to an active webpage.
On January 6, 2017 Complainant sent a cease-and-desist letter to Respondent, requesting the transfer of the Disputed Domain Name. Respondent did not reply to this cease-and-desist letter, and Complainant sent three additional reminders on January 19, February 8 and March 2, 2017 respectively. These letters remained unanswered. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. Complainant claims that Respondent knew, or at least should have known, of the existence of Complainant’s trademark. Complainant further argues that although the Disputed Domain Name does not revolve to any content, there is no plausible future active use of the Disputed Domain Name by Respondent that would be legitimate and not infringing Complainant’s mark. Finally, Complainant contends that by not answering to its cease-and-desist letter, after having received multiple reminders, Respondent has demonstrated an additional indication of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. The standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
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.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are SERVIER trademarks in which it has rights. The trademarks have been registered and used in various countries. The registration and use of these trademarks also clearly predate the registration of the Disputed Domain Name.
The Disputed Domain Name reproduces Complainant’s trademark SERVIER in its entirety. The incorporation of Complainant’s SERVIER trademark is preceded by a hyphen and also incorporates the trademark “icloud”, which belongs to a third party, namely Apple, Inc.
Previous UDRP panels have consistently found that the inclusion of a third-party trademark in the disputed domain name does not preclude a finding of confusing similarity (See, inter alia, Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793; Yahoo! Inc. v. Scott Mcvey,WIPO Case No. D2011-1486; WhatsApp Inc. v. Private Whois , Private Whois and Private Whois ,WIPO Case No. D2012-0674; Philip Morris USA Inc. v. Whoisguard Protected, Whoisguard, Inc. / MARK JAYSON DAVID,WIPO Case No. D2016-2194; F. Hoffmann-La Roche AG v. Bob,WIPO Case No. D2006-0751). Moreover, the addition of “icloud” may lead Internet users to believe that the Disputed Domain Name is connected to a cloud computing service offered by Complainant.
The Panel is moreover of the opinion that the addition of generic Top-Level Domains (“gTLDs”) can be disregarded when comparing the similarity between a domain name and a trademark (See Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae,WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). The addition of a hyphen and “.com” do not serve to alleviate potential Internet user confusion between the Disputed Domain Name and Complainant’s trademark.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to Complainant’s SERVIER trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on Respondent (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent exist.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, Respondent is not making any use of the Disputed Domain Name at all. According to previous UDRP panels, the passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; American Home Products Corporation vs. Ben Malgioglio,WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244).
Finally, the Panel notes that Respondent did not respond to the Complaint.
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the SERVIER trademark at the moment it registered the Disputed Domain Name, since Complainant’s trademark is a widely known trademark. Complainant also has valid trademarks in China, where Respondent is located. Furthermore, Complainant’s SERVIER trademark has no generic or descriptive meaning, indicating that Respondent must have had Complainant’s trademark in mind when registering the Disputed Domain Name. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, supra; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the disputed domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of complainant’s rights in the trademarks).
Respondent is not using the Disputed Domain Name. According to the Panel, the passive holding of the Disputed Domain Name may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Name by Respondent that would be legitimate (See Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the present case, the Panel is of the opinion that Complainant’s SERVIER trademark is widely known, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by Respondent.
The Panel also notes that Respondent did not respond to Complainant’s cease-and-desist letter. Therefore, the Panel considers that the inference of bad faith is strengthened, in light of the cumulative circumstances indicating bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, supra).
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown 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 Complainant
Flip Jan Claude Petillion
Sole Panelist
Date: May 10, 2017
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