The Complainant is Visiomed Group of Paris, France, represented by Coblence & Associés, France.
The Respondent is Privacy Protection Service - of Russian Federation / Medindex Limited Liability Company of St. Petersburg, Russian Federation, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2017. On May 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant 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 19, 2017 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 amendment to the Complaint on May 19, 2017.
The Center verified that the Complaint together with the amendment to 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”).
The Center sent an email communication to the Parties on May 19, 2017 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Russian.
On May 19, 2017, the Complainant filed the request for English to be the language of the administrative proceedings. On May 23, 2017, the Center acknowledged receipt of the Complainant’s submissions relating to the language of proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2017. The Response was filed with the Center on June 20, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on July 5, 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 is a French company specializing in connected medical products. Pursuant to the Complaint, in 2007, the Complainant initiated the ThermoFlash, the first non contact thermometer. Since 2014, the Complainant extended its activity by introducing a range of smart connected devices such as thermometers, blood pressure monitors, handheld electrocardiogram etc, marketed under the sign “BEWELL CONNECT’ and associated with a platform for interpretation and personalized reporting.
The Respondent is a company registered under laws of the Russian Federation. According to the Response, it acts solely within the Russian Federation.
The Complainant owns the following trademarks:
- French trademark registration (application No. 3984141 dated February 19, 2013) for the BEWELL mark in classes 9, 10, 35, 38, 41, 42 and 44;
- French trademark registration (application No. 4222294 dated November 2, 2015) for the BEWELLXPERT mark in classes 35, 38, 41, 42 and 44;
- French trademark registration (application No. 3984151 dated February 19, 2013) for the BEWELL CHECK-UP mark in classes 9, 10, 35, 38, 41, 42 and 44;
- French trademark registration (application No. 3984147 dated February 19, 2013) for the BEWELL CONNECT mark in classes 9, 10, 35, 38, 41, 42 and 44;
- French trademark registration (application No. 4127622 dated October 21, 2014) for the BEWELL CONNECT mark in classes 9, 10, 35, 38, 41, 42 and 44;
- French trademark registration (application No. 4189260 dated June 15, 2015) for the BEWELL COACH mark in classes 5, 9, 10, 14 and 44;
- French trademark registration (application No. 4222466 dated November 2, 2015) for the BEWELL CHECK-UP mark in classes 35, 38, 41, 42 and 44;
- French trademark registration (application No. 4193121 dated June 29, 2015) for the BEWELL CONNECT mark in classes 5, 9, 10, 14, 35, 38, 41, 42, 44 and 45;
- the European Union (“EU”) registration (application No. 011585841 dated February 19, 2013) for the BEWELL CONNECT mark in classes 9, 10, 35, 38, 41, 42 and 44;
- the EU registration (application No. 011585742 dated February 19, 2013) for the BEWELL CHECK-UP mark in classes 9, 10, 35, 38, 41, 42 and 44;
- International trademark No. 1270350, dated April 21, 2015 for the BEWELL CONNECT mark in classes 9, 10, 35, 38, 41, 42 and 44, designating the United States of America (“USA”) and China;
- International trademark registration No. 1299461, dated December 16, 2015 for the BEWELL CONNECT mark in classes 5, 9, 10, 35, 38, 41, 42 and 44, designating the USA and China and Russian Federation (with a partial provisional refusal of protection in Russian Federation for certain goods and services).
According to TMview, there are cancellation proceedings pending in case of the EU trademark registration No. 011585809 of July 17, 2013 for the BEWELL mark which the Complainant claims to be valid.
According to the information provided by the Registrar, the disputed domain name was registered on July 13, 2016. However, according to the WhoIs for the disputed domain name, it was registered on April 1, 2016. It has been inactive since then.
On April 18, 2017, the Complainant sent a formal notice to the Privacy Protection Service – , requesting that it reveals the identity of the Respondent. On April 20, 2017, Privacy Protection Service – responded and provided the Complainant with an email address which was supposed to serve for the purpose of communication with the Respondent. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant asserts that the disputed domain name is confusingly similar to its trademarks. According to the Complainant, the disputed domain name exactly reproduces one of the verbal elements of the Complainant’s mark BEWELL in the exact same order and of the new Top-Level Domain (“TLD”) suffix “.online”. The Complainant emphasized that the adjunction of the new TLD suffix “.online” is insufficient to differentiate the disputed domain name and the BEWELL marks.
Secondly, the Complainant claims that the Respondent has neither rights nor legitimate interests in respect of the disputed domain name . To the Complainant’s knowledge, the Respondent has never registered a BEWELL mark and has never acquired any common law rights on this wording. Moreover, the Complainant argues that it has neither authorized nor licensed the Respondent in any way to use or exploit the BEWELL marks or to register the disputed domain name. In the Complainant’s opinion, the Respondent has not made a legitimate noncommercial of fair use of the disputed domain name as the website that it resolves to is inactive.
Thirdly, the Complainant contends that the Respondent has registered the disputed domain name in bad faith to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion. According to the Complainant, the Respondent could not ignore the reputation and therefore, the disputed domain name has been registered in bad faith, perfectly knowing other rights anteriorly existed over the BEWELL marks. Furthermore, the Complainant asserts that the Respondent registered the disputed domain using the privacy shield which is another sign of the bad faith. The Complainant also emphasizes that the Respondent has never presented any response pertaining to merits, despite notices which were sent to him. In addition, the Complainant claims that the passive holding of the disputed domain name constitutes a bad faith use. B. Respondent
Firstly, the Respondent asserts that the Complainant has not provided any evidence which proves that the Respondent used or intended to use the disputed domain name to promote products or services for which the BEWELL marks are registered.
Secondly, the Respondent contends that the BEWELL marks are not legally protected in the Russian Federation.
Thirdly, according to the Respondent, the disputed domain name was registered recently which may suggest that the Respondent may still be developing and fixing the websites that it will resolve to. The Respondent argues that it is making a legitimate noncommercial / fair use of the domain name, without intent for commercial gain.
Finally, the Respondent asserts that it is not a competitor of the Complainant. It also argues that the disputed domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name. The Respondent finds that the Complaint is unjustified. 6. Discussion and Findings (i) Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that the Respondent replied to its cease and desist letter of February 1, 2017 in English.
The Response was filed in English. This way, the Respondent agreed for English to be the language of the proceedings. Therefore, the Panel finds that it is appropriate to allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules. (ii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s BEWELL mark in its entirety. The Policy does not require a trademark to be registered or to designate a country in which the Respondent operates to find that the domain name is identical or confusingly similar to the trademark.
The mere adjunction of a generic TLD (“gTLD”) “.online” is irrelevant for the finding of identical or confusing similarity as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (Heineken Italia S.p.A. v. xiongmiao,WIPO Case No. D2016-2193 and Les Laboratoires Servier v. miller / JunZe zhang,WIPO Case No. D2016-2029).
Therefore, the Panel finds that the disputed domain name is identical to the BEWELL mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Complainant has neither authorized nor licensed the Respondent to use its trademarks. The Parties have no business relationship with each other. There were also no arguments made that the Respondent was previously known under the BEWELL mark. Moreover, the Respondent did not present any arguments nor evidence demonstrating the preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
In the light of above, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, noting the circumstances of the case and the near instantaneous and global reach of the Internet and search engines, the Panel finds that on the balance of probabilities the Respondent knew or should have known about previously registered BEWELL marks. Moreover, the Respondent has not provided any explanation as to the reason why it registered the disputed domain name, or any evidence regarding (demonstrable) preparations to use the disputed domain name.
Secondly, the disputed domain name resolves to an inactive website, which this Panel considers an instance of passive holding. As many UDRP panels indicted in numerous prior UDRP decisions, the fact that a domain name is held passively does not prevent a finding of bad faith (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon,WIPO Case No. D2004-0245; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation,WIPO Case No. D2000-1232). The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant’s concealment of its identity”. See section 3.3 of the WIPO Overview 3.0. In this case, the Response was filed; the Respondent has not submitted evidence on the rationale for registering the disputed domain name and evidence of potential or intended use in good faith (use of the disputed domain name remains unclear) which can cast doubts on the good faith of the Respondent. It seems from the Response that the Respondent tries to rebut the Complainant’s allegations merely on technical grounds (i.e., by arguing the scope of Complainant’s rights) rather than submitting evidence of the Respondent’s good faith. Moreover, lack of the Respondent’s reply for the notices sent by the Complainant and the use of the privacy shield to conceal the Respondent’s identity also support bad faith finding. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.
Therefore, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Piotr Nowaczyk
Sole Panelist
Date: July 19, 2017
Full & Egal Universal Law Academy