The Complainant is Indivior UK Limited of Slough, United Kingdom of Great Britain and Northern Ireland, represented by Troutman Sanders, LLP, United States of America (“United States”).
The Respondent is Cimpress Schweiz GmbH of Zurich, Switzerland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2018, 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 March 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2018.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on April 6, 2018. 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 and its affiliates together make up a pharmaceutical business that sells pharmaceuticals for addiction treatment and control throughout the world.
The Complainant inter alia holds rights in and to the following trade marks in the United States and other countries (the “Trade Marks”):
- United States registration word mark INDIVIOR no 4,718,643 registered on April 14, 2015.
- United States registration device/word mark INDIVIOR no 5,261,730 registered on August 8, 2017.
The Domain Name was registered on November 16, 2017. The Domain Name does not resolve to a website. 5. Parties’ Contentions A. Complainant
According to the Complainant, the Trade Marks are distinctive and strong marks, as the term “INDIVIOR”, of which they consist, is a coined term that has no dictionary definition, nor is it descriptive nor generic with respect to any products or services. The Domain Name, the Complainant contends, is confusingly similar to the Trade Marks in that the Domain Name incorporates the term “INDIVIOR” in its entirety with the addition of an “s”, which denotes a plural form. The Complainant further submits that, because the Trade Mark is the dominant and distinctive element of the Domain Name, the Domain Name strongly conveys the impression of sponsorship by or association with the Complainant. The Complainant further states that the Respondent registered the Domain Name after the Complainant, through predecessors in interest, registered the Trade Marks in the United States and in other jurisdictions and after the Complainant began using the Trade Marks.
According to the Complainant, the Respondent has not established rights or legitimate interests in the Domain Name, as it is not a licensee of the Complainant nor otherwise authorized to use the Trade Marks for any purpose. Moreover, the Complainant submits that, to its knowledge, the Respondent owns no United States or international trade mark applications or registrations for the “INDIVIOR” name or any variants thereof, and has never used the Trade Marks prior to the registration of the Domain Name and is not commonly known under the Trade Marks. In addition, the Complainant points out, the Respondent does not use the Domain Name and has not made preparations to use the Domain Name in connection with a bona fide offering of goods or services pursuant to the Policy or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).
The Complainant further puts forward that the Respondent knowingly registered the Domain Name, which in its view is a near-exact reproduction of the Trade Marks. The addition of an “s”—commonly used to create a plural word—is inherently bad-faith typosquatting under the Policy paragraph 4(a)(iii), the Complainant contends. Moreover, the Complainant states, the Trade Marks are unique and arbitrary such that it is unlikely that the Respondent divined the term “indiviors” on its own. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the term “indivior”, of which the Trade Marks consist, in its entirety. The addition of a plural “s” does not avoid the confusing similarity between the Domain Name and the Trade Marks. The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests
Under paragraph 4 (c) of the Policy, the Complainant has to prove that the Respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the Respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, paragraph 2.1.
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. The Respondent’s use of the Domain Name in the present case does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Name occurred two-and-a-half years after the registration of the earliest of the Trade Marks;
- the mark INDIVIOR, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active website does not imply a lack of bad faith. As set out in the WIPO Overview 3.0, paragraph 3.3, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trade mark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka,WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith.
In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;
- the non-dictionary nature of the mark INDIVIOR incorporated in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Marks;
- the lack of a formal Response of the Respondent;
Therefore, the Panel concludes that the Domain Name has been 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 the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: April 19, 2018
Full & Egal Universal Law Academy