The Complainant is Les Laboratoires Servier of Suresnes, France, represented by IP Twins S.A.S., France.
The Respondent is John Odonnell, Social Talent of Charlotte, North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2017. On September 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 October 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on November 3, 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. The Center received an email communication from an email address apparently associated with the Respondent on November 4, 2017. 4. Factual Background
The Complainant is a French pharmaceutical group. The Complainant operates in 148 countries worldwide. The Servier Group was founded in 1954 by Dr. Jacques Servier, who took over a small pharmaceutical company and over the years transformed it into the Complainant, using his own surname as a company denomination, business name, trademark and later as a domain name.
The Complainant is the owner of a number of trademarks worldwide for SERVIER, including:
- EU Trademark Registration SERVIER n° 004279171, dated October 15, 2007, designating goods and services in international classes 5, 35, 41, 42 and 44;
- International Trademark Registration SERVIER n° 814214, dated August 8, 2003, designating goods and services in international classes 5, 35, 41, 42 and 44;
- International Trademark Registration SERVIER n° 571972, dated May 29, 1991, designating goods in international classes 1, 3 and 5;
- International Trademark Registration SERVIER n° 549079, dated January 19, 1990, designating goods and services in international classes 1, 3, 5, 10, 16, 35, 41 and 42.
The Complainant is also the holder of domain names incorporating its trademark both within generic Top−Level Domains(“TLDs”) and country code TLDs: , , , and others.
The Registrar confirmed that the disputed domain name was registered to the Respondent since at least September 9, 2017. The disputed domain name resolves to the website of the Complainant’s Australian subsidiary, which is accessible at “www..au”. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is confusingly similar to its SERVIER mark.
This is because the disputed domain name includes the entirety of the Complainant’s mark and adds only the letters “hr” separated by a hyphen. In this context, the letters “hr” appear to stand for the terms “human resources”, which are non-distinctive.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy, which might demonstrate such rights or legitimate interests.
The Complainant undertook a “reverse WhoIs search” on the Respondent’s email address which revealed dozens of domain names registered to the Respondent. Among them, several domain names consisted in the same pattern: . For example, the Complainant detected domain names including companies / brand names such as , and . In those three examples, the WhoIs contact information is the same as for the disputed domain name.
The Complainant, finally, says that the disputed domain name was registered and has been used in bad faith. The combination of the distinctiveness of the Complainant’s trademark and its extensive use across the world makes it highly unlikely that the Respondent did not know about the Complainant before the registration of the disputed domain name. Indeed, the Respondent’s choice of domain name cannot have been accidental and must have been influenced by the fame of the Complainant’s trademark. A simple search on an online search engine yields top-ranked results related to the Complainant.
The Respondent redirected the disputed domain name towards the website “www..au” which is also evidence that the Respondent was well-aware of the Complainant and its rights at the stage of the registration. The Respondent registered other domain names including well-known brands and appears to be familiar with the registration of domain names including third-party trademarks.
The Complainant also notes that the WhoIs contact used by the Respondent for the disputed domain name as well as other domain names including well-known trademarks are questionable as the Complainant found no trace of “Social Talent” in Charlotte (United States) and the domain name displayed in the WhoIs is registered under a proxy service and redirects toward a parking page. This indicates a pattern of conduct that aims to obfuscate the Respondent’s true identity or possibly, to further mislead Internet users by posing as a HR services company (e.g. a company providing recruiting services).
The Complainant is concerned that the disputed domain name is likely to be used in a fraudulent employment scheme. While the Complainant has not received reports of fraudulent emails sent using the disputed domain name, the Complainant has been targeted by such practices in the past. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
On November 4, 2017, after the appointment of the Panel, the Center received the following email, apparently from an email address associated with the Respondent: “Hi, I have responded and this URL was set up for the recruiting Application we provide for Servier. If they would like it changed, please let me know”. 6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove 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 was registered in bad faith and are being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn below. A. Identical or Confusingly Similar
The Complainant has provided evidence of having rights in its registered mark for SERVIER in various jurisdictions. The Complainant therefore has demonstrated that it has rights for the purpose of paragraph 4(a)(i) of the Policy.
The question of whether the disputed domain name is identical or confusingly similar to the Complainant’s mark relatively straightforward comparison between the complainant’s trademark and the disputed domain name: see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is also well-established that this comparison excludes the domain name “.com” extension, which is merely a necessary functional element of the disputed domain name.
The Complainant’s mark is entirely incorporated in the disputed domain name, as the first-appearing element. It also adds the letters “hr” separated from the Complainant’s mark by a hyphen. The hyphen itself is a trivial addition and does not serve to distinguish the Complainant’s mark. The Complainant argues that the letters “hr” are an abbreviation of “human resources”. The Panel is in little doubt that those letters are a common abbreviation for those terms. There was no other evidence put forward in this case that those letters might have some other more common association. As such, those letters do little to distinguish the Complainant’s mark. The Complainant’s mark remains clearly recognizable in the disputed domain name.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SERVIER mark. B. Rights or Legitimate Interests
The Complainant has put forward a prima face case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has disclaimed any relationship with the Respondent. The Complainant also undertook research into the Respondent. The Complainant says that it was unable to find any information on the apparently company or business name (“Social Talent”), associated with the Respondent in the WhoIs details. A search of the Respondent’s email address shows that the Respondent is the registrant of a number of other domain names that incorporate trademarks which append the same suffix (“-hr”) as in this case. The Complainant says that the Respondent has pointed the disputed domain name to a website of one of its subsidiaries, to create a veneer of legitimacy. In light of all this, the Complainant says that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name.
The Respondent has not replied to rebut this case. There is nothing self-evident in the name of the Respondent or its use of the disputed domain name that might indicate some possible right or legitimate interest in it. The Panel cannot find any other evidence in the case file which suggests that the Respondent might have some rights or legitimate interests in the disputed domain name.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative circumstances, that shall be evidence of the registration and use of a domain name in bad faith by a respondent. These are:
(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent registered the disputed domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site 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 the Respondent’s web site or location or of a product or service on your web site or location.
Each of these circumstances require some evidence of intention on the part of the Respondent. There is no evidence in this case that the Respondent intended to register and then use the disputed domain name for one of the purposes described in paragraphs 4(b)(i) or (iv) of the Policy. The Respondent has not evidently sought to sell the disputed domain name. The Respondent has not sought to attract Internet users to its own website, but rather has directed to it to one of the Complainant’s own subsidiaries. The evidence is somewhat suggestive that the Respondent may have demonstrated a relevant “pattern of conduct”, within the meaning of paragraph 4(b)(ii). In this connection, the Complainant provides evidence that the Respondent has registered other well-known trademarks in domain names that follow a similar pattern to the disputed domain name in this case. However the Panel has limited evidence of the Respondent’s intention in relation to, and the trademark rights of, entities that are not parties to these proceedings. As such, the Panel has not further considered whether bad faith is present for the purpose of that particular paragraph.
In this case, the primary indication of the Respondent’s intention in registering and using the disputed domain name is from an apparent email from the Respondent himself. In that email, the Respondent indicates that he registered and used the disputed domain name “for the recruiting Application we provide for Servier”. However, the Complainant has disclaimed having authorized the Respondent to use its trademark for any such purpose.
The Panel considers that such conduct is suggestive of the Respondent’s intention to disrupt the Complainant’s business, within the meaning of paragraph 4(b)(iii) of the Policy. The Respondent has incorporated the Complainant’s mark entirely in the disputed domain name, and otherwise demonstrate no independent rights or legitimate interests in doing so. The Complainant has been in business, and has registered marks, for a long period before the Respondent’s registration of the disputed domain name. The Respondent’s statement of its intention in registering and using the disputed domain name indicate that he was fully aware of the Complainant’s mark and business and sought to use the disputed domain name to create some unauthorized “recruitment” service. The Respondent has used the disputed domain name to, without authorization, point to the website of one of the Complainant’s subsidiaries.
The Respondent’s conduct in this respect would readily, and misleadingly, suggest some legitimate connection between the Complainant and the disputed domain name. As such, the Respondent’s registration, and use in this way, of the disputed domain name would have the potential to disrupt the Complainant’s business. The Complainant itself expresses concern that the Respondent’s conduct may have been done with such an intention.
As to whether the Complainant is also a “competitor” of the Respondent, for the purpose of paragraph 4(b)(iii) of the Policy, the Respondent’s conduct appears to be designed to trade on the reputation of the Complainant’s mark. It also appears to be directed to establishing a business (recruitment) that is necessarily a supporting function of the Complainant’s own business. In these respects, the Respondent’s conduct appears deliberately designed to compete with at least a component of the Complainant’s business.
It is arguable that the Respondent is not a competitor of the Complainant because it does not offer the same goods or services (pharmaceuticals) that are the primary focus of the Complainant’s business. Rather the Respondent is only pointing the disputed domain name to one of the Complainant’s own websites. The Panel considers that little turns on any such argument. Paragraph 4(b) of the Policy is not exhaustive. It should therefore be possible to apply its provisions to situations that differ only slightly from the situations described in that paragraph, even if this narrow interpretation of the term “competitor” was applied: Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.) v. Tuyap /K/Koznet Kurumsal Internet Hizmetleri,WIPO Case No. D2003-0442.
For these reasons, the Panel finds that the disputed domain name was registered and has been 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 the Complainant.
James A. Barker
Sole Panelist
Date: November 17, 2017
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