The Complainant is Nova Brands SA of Luxembourg, represented by Dreyfus & associés, France.
The Respondent is Guanrui, Groupfield Limited of Singapore. 2. The Domain Name and Registrar
The 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 9, 2018. On March 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 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 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on April 13, 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
For at least 20 years, the Complainant has supplied milk formula and other infant nutrition products under the name “Novalac”. Its products are distributed worldwide including in Asia.
The Complainant owns a number of trade marks for NOVALAC including International Registration no. 727695, registered on December 17, 1999, in classes 5, 29 and 30.
The disputed domain name was registered on May 16, 2017.
On January 11, 2018, the Complainant sent a cease and desist letter to the Respondent. The Respondent replied the same day, simply stating: “Hello, Only 3500 USD for this domain name.”
On January 16, 2018, the Complainant wrote the Respondent re-asserting its rights and declining to pay for a domain name whose value was provided by its own trade marks.
The Respondent replied January 22, 2018 as follows: “Sorry, this domain name is only for sale. If you want to acquire it, please contact us.”
As of February 8, 2018, the disputed domain name resolved to a parking page with pay-per-click (“PPC”) links relating mainly to lakes and camping. 5. Parties’ Contentions A. Complainant
The Complainant’s mark enjoys a worldwide reputation.
The disputed domain name is identical to the Complainant’s trade mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not demonstrated use or demonstrable use in connection with a bona fide offering of goods or services.
The disputed domain name resolves to a parking page displaying various commercial links and so the Respondent cannot claim that it is making a legitimate non-commercial or fair use of the disputed domain name. The Respondent’s intention to make commercial gain is also clear from the Respondent’s communications to the Complainant.
The disputed domain name was registered and is being used in bad faith.
It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, given the international fame of the Complainant and its worldwide trade mark registrations. In any event, quick trade mark or search engine searches would have revealed the existence of the Complainant and its trade marks.
The Respondent’s immediate offer to sell the disputed domain name without giving reasons for having registered the disputed domain name or contesting the Complainant’s trade mark are clear indications that the Respondent was aware of the Complainant’s trade mark at the time of registration, as is its demand for USD 3,500. This behaviour indicates that the Respondent hoped to sell the disputed domain name to the Complainant or a competitor in excess of the Respondent’s out-of-pocket costs in registering the disputed domain name.
The Respondent registered the disputed domain name to prevent the Complainant from using its trade mark in the disputed domain name.
The Respondent owns other domain names which include well-known trade marks. The Respondent has been found to have registered and used a domain name in bad faith in at least one previous UDRP case.
The use of the Complainant’s well-known trade mark to attract Internet users to a parking page for commercial gain constitutes use in bad faith. The Respondent’s primary motive in registering and using the disputed domain name was to capitalise on the Complainant’s trade mark rights, through the creation of initial interest of confusion.
The Respondent may be engaging in a phishing scheme as email servers have been configured for the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark NOVALAC by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Disregarding the domain name suffix, the disputed domain name is identical to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with PPC links which appear to relate principally to the term “lac” (meaning “lake” in French) which forms part of the disputed domain name. Section 2.9 of the WIPO Overview 3.0, states that it is consistent with respondent rights or legitimate interests to use a disputed domain name comprising an actual dictionary word or phrase to host PPC links genuinely related to the dictionary meaning of the word or phrase comprising the domain name, and not to trade off the complainant’s trade mark. However, in this case the disputed domain name as a whole is not a dictionary word or phrase. Furthermore, the Panel has concluded below that the Respondent registered the disputed domain name for sale to the Complainant at a price which exceeded the Respondent’s out-of-pocket acquisition costs. In those circumstances, the Panel considers that the Respondent’s above-mentioned PPC use of the disputed domain name could not be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
For the following reasons, the Panel considers that, on the balance of probabilities, the Respondent registered the disputed domain name for sale to the Complainant at a price which exceeded the Respondent’s out-of-pocket acquisition costs in accordance with paragraph 4(b)(i) of the Policy. This is one of the non-exhaustive examples of registration and use in bad faith.
1. The Respondent replied instantly to the Complainant’s cease and desist letter with a USD 3,500 price for the disputed domain name, without any attempt to justify or explain its registration of the disputed domain name.
2. The Respondent has not appeared in this proceeding to deny awareness of the Complainant at the time of registration of the disputed domain name; nor did it raise any such argument in its response to the Complainant’s letter.
3. The Respondent was found to have engaged in similar behaviour in a previous UDRP case, Booz Allen Hamilton Inc. v. Guanrui, Groupfield Limited,WIPO Case No. D2015-1614, where the panel concluded that, amongst other things, the Respondent had registered the domain name for sale to the complainant or a competitor.
4. The Respondent owns many domain names comprising the names of well-known trade marks such as LOUIS VUITTON, SPRITE and T-MOBILE.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 name be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: April 25, 2018
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