The Complainants are ISISPHARMA France SAS of Wasquehal, France and ISIS PHARMA GmbH of Brig, Switzerland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Kin Pleven Ltd. of Pleven Bulgaria. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 21, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 26, 2017, 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 April 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2017.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 29, 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, ISISPHARMA France SAS and ISIS PHARMA GmbH ("Complainant"), is fully owned by DEWAVRIN SA. DEWAVRIN SA owns the company ISIS PHARMA GmbH, through its fully owned subsidiary Compagnie LAINIERE. The Complainant is the owner of multiple trademark registrations across various jurisdictions. Furthermore, ISIS PHARMA GmbH licenses its trademarks to ISISPHARMA France SAS, which sells products branded with said trademark.
The Complainant has proven to be the owner of the ISISPHARMA trademark which enjoys protection through several registrations worldwide.
The Complainant is, inter alia, the owner of:
French Trademark No. 3334692, ISISPHARMA, filed on February 18, 2005 (classes 3 and 5);
French Trademark No. 3651571, ISIS PHARMA DERMATOLOGIE, filed on May 18, 2005 (classes 3 and 5); and
European Union Trademark No. 008296221, ISISPHARMA, registered on April 26, 2010 (classes 3 and 5);
The disputed domain names were registered by the Respondent on April 82, 2012.
The Complainant's above trademark registrations predate the registration of the disputed domain names.
The disputed domain names , , and redirect Internet users to websites that copy and attempt to duplicate the Complainant's official website by prominently displaying the ISISPHARMA logo alongside ISISPHARMA-labeled skin care products. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the ISISPHARMA trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used 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 names, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established rights in the ISISPHARMA trademark.
The disputed domain names , , and incorporate the Complainant's ISISPHARMA trademark in its entirety, merely adding generic and/or geographically oriented terms such as "buy", "eu," "uk" and "usa" to such trademark.
It is well established that the addition of a generic and/or geographic term to a trademark does not alter the underlying trademark or negate the confusing similarity.
Therefore this Panel finds all the disputed domain names to be confusingly similar to the trademark ISISPHARMA in which the Complainant has rights.
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 a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. 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 engage in any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain names or by a similar name. Moreover, the Respondent has not replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that, based on the record, the Complainant has demonstrated the Respondent's bad faith pursuant to paragraph 4(b)(iv) of the Policy.
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 ISISPHARMA mark when it registered the disputed domain names.
The Respondent's knowledge of the ISISPHARMA mark is particularly obvious given the Respondent's use of the disputed domain names to redirect users to websites prominently displaying the ISISPHARMA logo and offering for sale ISISPHARMA-labeled skin care products.
The Respondent's use of the disputed domains names is causing further disruption, since users are fooled into thinking that this is a bona fide offering of goods, but according to the file on record users who have requested products through Respondent's websites did not receive the goods they paid for.
Indeed, the Complainant has shown that it has received several emails from clients who have fallen victim to the disputed domain names' fraudulent offering.
Therefore, the Panel finds that the Respondent knew of the Complainant's marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain names.
The above mentioned use of the disputed domain names, which constitutes an obvious and deliberate attempt to mislead Internet users into believing that the Respondent is affiliated with the Complainant, is also a clear indication of bad faith.
In addition, cosmetic products need to adhere to the local regulations in the countries where they are sold. The fact that the Respondent through the websites corresponding to the disputed domain names is selling the Complainant's products in countries where Complainant has not sought to, and therefore does not, comply with the national regulations is further inference of the Respondent's bad faith use of the disputed domain names.
Finally, the Respondent has not replied to the Complainant's cease and desist letter, and has not responded to (nor denied) the assertions made by the Complainant in this proceeding.
Accordingly, the Panel finds that 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 names: , , and be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: June 7, 2017
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