The Complainant is Biogaran of Colombes, France, represented by IP Twins S.A.S., France.
The Respondent's name has been redacted for reasons explained below1. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 20, 2018. On March 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 20, 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 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2018.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 3, 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, Biogaran, is a part of the Servier Group, a large independent pharmaceutical group located in France.
Biogaran is the worldwide owner of numerous BIOGARAN trademarks including (but not limited to):
- French trademark BIOGARAN (word) n° 3038362, dated July 4, 2000, duly renewed and covering goods in international class 05;
- International trademark BIOGARAN (word) n° 751187, dated January 2, 2001, duly renewed, covering goods in international class 05 and designating 49 countries;
- International trademark BIOGARAN (Latin characters and Chinese translation) n° 797089, dated January 16, 2003, duly renewed, covering goods in international class 05 and designating China;
- International trademark BIOGARAN (word) n° 837217, dated January 22, 2004, duly renewed, covering goods in international class 16, 35, 41, 42, 44 and designating 71 countries;
Biogaran also owns numerous domain names that incorporate its BIOGARAN trademark within both generic TLDs and geographical TLDs: ,, , , , and many others.
The Domain Name was registered on March 3, 2018. It is currently not used in connection with an active website and it resolves to an error page. 5. Parties' Contentions A. Complainant
The Complainant makes the following assertions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's BIOGARAN Trademarks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant argues that the Domain Name is confusingly similar to the Complainant's trademarks since it consists of the entire BIOGARAN trademark and the term "colombes" which refers to a French city where the Complainant's headquarters are located. It emphasizes the confusion for consumers.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name as the Domain Name was registered under the name of the Complainant's President. However, according to the Complainant, the Domain Name was registered by an unknown third party. The Complainant further argues that the Respondent does not make a fair use of the Domain Name as it resolves to an error page. Finally, the Complainant asserts that it never gave authorization to a third party to register the Domain Name on his behalf.
The Complainant further argues that the Domain Name was registered and has been used in bad faith. It argues that by registering the Domain Name the Respondent aimed to take advantage of the reputation of the BIOGARAN trademarks owned by the Complainant. The BIOGARAN trademarks are well-known in France and especially in Colombes where the Complainant's headquarters are located. The Complainant further argues that the combination of the terms "biogaran" and "colombes" indicates that the Respondent knew of the Complainant's rights before registering the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted the evidence of its prior rights for the BIOGARAN mark in the form of registered trademarks.
The Domain Name consists of Complainant's BIOGARAN trademarks, and a geographical term "colombes" which refers to the Complainant's headquarters location. This is sufficient to find confusing similarity in the Policy's terms. Previous panels already stated that "the addition of merely generic, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP" (See Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP / Yogesh Bhardwaj,WIPO Case No. D2017-1225).
In this case, the Panel finds that the combination of the Complainant's trademarks and the name of the city where it is headquartered further increases the risk of confusion.
Furthermore, the Panel finds that the applicable Top Level Domain in a domain name such as ".com" is considered a standard registration requirement and, as such, is disregarded under the confusing similarity test. (See RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies,WIPO Case No. D2006-0582).
Consequently, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses the ways in which a respondent may demonstrate his rights and legitimate interests in a disputed domain name, it is well established that, as stated in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), a complainant is required to offer a prima facie case showing that the respondent does not have rights or legitimate interests. Once such prima facie case is established, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights and legitimate interests in the domain name. If the respondent comes forward with relevant evidence of his rights and legitimate interests, the panel weighs all the evidence with the burden of proof always remaining with the complainant.
According to the WhoIs database, the Domain Name was registered under the name of the Complainant's President, with an address at the Company's headquarters. To the best of the Complainant's knowledge, the Domain Name has been registered by a third party, whose identity is unknown, impersonating its President. This allegation is supported by the fact that the Respondent used the email address "kpaniou203@[...]" in the WhoIs contact information. A reverse WhoIs search performed for the Respondent's email address "kpaniou203@[...]" revealed the Domain Name. The Respondent's email address search on Google gave no results. The Panel finds that given the circumstances, the Respondent cannot have rights or legitimate interests in the Domain Name.
The Respondent is neither affiliated nor connected to the Complainant in any way, nor was authorized or licensed by the Complainant to register and use the Domain Name that incorporates the BIOGARAN trademarks. It does not appear to have any independent right to the Domain Name.
The Respondent does not use the Domain Name as it resolves to an error page. This constitutes prima facie evidence of lack of rights or legitimate interests according to previous panels decisions (Natixis v. Sylvia Postler,WIPO Case No. D2015-0960).
For all the above-mentioned reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Pursuant to the Policy (paragraph 4(a)(iii)), the Complainant must show that the Respondent has registered and uses the disputed domain name in bad faith.
The Panel finds that the Respondent must have been aware of the Complainant's reputation with respect to BIOGARAN trademarks at the time of registering the Domain Name. According to the evidence filed by the Complainant, the fact that the Respondent combined the Complainant's trademark and the city name "Colombes" is likely to mislead Internet users, and it proves that the Respondent knew about the Complainant's BIOGARAN trademarks before registering the Domain Name. It also shows the Respondent's bad faith in these particular circumstances since the BIOGARAN trademarks, owned by the Complainant, were registered long before the registration of the Domain Name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
Lack of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above, and the Panel finds that registration was made in bad faith.
The term "biogaran" is a distinctive mark that does not have any meaning in English or French. Thus, it can only refer directly to the Complainant's BIOGARAN trademarks and company name. There is no obvious reason for choosing the Domain Name, and the Respondent did not offer an explanation for the decision to register a domain name that combines a reproduction of the BIOGARAN trademarks in its entirety and the name of the city where the Complainant's company is headquartered. The only reason for the registration of the Domain Name would be to create a likelihood of confusion between the Domain Name and the Complainant's BIOGARAN trademarks.
The Domain Name is confusingly similar to the Complainant's BIOGARAN trademarks. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be an evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent's website currently resolves to a website with an error page. Previous panels have already stated that such "passive holding" of a disputed domain name does not prevent a finding of bad faith, particularly in light of all relevant circumstances (See, e.g., American Society of Hematology v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP / Andy Abbott, IT Company,WIPO Case No. D2017-1307).
Accordingly, the Panel finds that the Respondent has registered and uses the Domain Name in bad faith under 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 name be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: May 11, 2018
1 Attached as Annex 1 to this Decision is the Panel's instruction to the Registrar regarding the transfer of the disputed domain name including the Respondent's name. The Panel has authorized to transmit Annex 1 to the Registrar as part of the order in this proceeding, but has indicated that Annex 1 to his Decision shall not be published due to the circumstances of the case.
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