Complainant is Leo Pharma A/S of Ballerup, Denmark, of Denmark, represented by Gill Jennings & Every, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Upperlink Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2018. On April 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on April 26, 2018, to address an administrative formality.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 17, 2018.
The Center appointed Ingrida Karina-Berzina as the sole panelist in this matter on May 28, 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
Complainant is a pharmaceutical company founded in 1908 and based in Denmark. It is the owner of a number of trade marks, including:
- European Union Trade Mark (“EUTM”) Registration No. 6030423 for LEO (word mark) in Classes 3, 5, 10, 16, 35, 39, 40, 41, 42 and 44, filed on June 22, 2007 and registered on April 24, 2009.
- EUTM Registration No. 6109839 for LEO (fig.) in classes 3, 5, 10, 16, 35, 39, 40, 41, 42 and 44, filed on July 18, 2007 and registered on April 24, 2009.
- EUTM Registration No. 6532857 for LEO PHARMA (word mark) in classes 3, 5, 10, 16, 35, 39, 40, 41, 42 and 44, filed on December 20, 2007 and registered on July 11, 2016.
An unknown party registered the Domain Name in the name of Respondent on October 24, 2017. The party registered the Domain Name using Respondent’s name but used a mailing address with an incorrect postal code, an unknown United Kingdom telephone number and a Nigerian email address unaffiliated with Respondent. The record contains a statement signed by an officer of the company in whose name the Domain Name was registered attesting to these facts, and Complainant states that it accepts this explanation.
The Domain Name previously resolved to a website advertising articles of clothing. The Domain Name no longer resolves to an active website. 5. Parties’ Contentions A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant asserts that the Domain Name is highly similar, if not identical, to Complainant’s registered marks, particularly the registered trade mark LEO PHARMA. Complainant states that the incorporation of the element “inc” does not distinguish the Domain Name because it is entirely descriptive, indicating the supposed corporate status of Respondent. Complainant states that the addition of the domain suffix “.com” is non-distinctive because it is a generic Top-Level Domain (“gTLD”) designation for registration of a domain name.
Complainant maintains that Respondent has no rights or legitimate interests in respect of the Domain Name. The Registrant knew of, and sought to capitalize on, the fame and value of Complainant’s trade mark by registering the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name to Complainant or one of its competitors.
Complainant indicates that the Domain Name was registered primarily as a blocking registration against marks in which Complainant has rights and to intercept traffic intended for Complainant. The website hosted at the Domain Name incorporates Complainant’s trade marks, is therefore fraudulent in nature and interferes with the business of Complainant by diverting business and/or by tarnishing its reputation.
Complainant states that no permission has been granted to Respondent to use any of Complainant’s marks. When contacted by Complainant, the named Respondent stated that the Domain Name was registered by an unknown party that had improperly assumed the named Respondent’s identity and that it was therefore unable to transfer control of the Domain Name to Complainant. As a result, Complainant filed this Complaint. The circumstances of this registration indicate that the Domain Name can only have been registered in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out three elements:
(i). The Domain Name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii). Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii). Respondent registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has provided evidence showing it has rights in the LEO and LEO PHARMA marks. Such rights are established by the registrations issued by the European Union Intellectual Property Office.
The Panel finds that the Domain Name is confusingly similar to the LEO PHARMA and LEO marks. The Domain Name incorporates the marks in their entirety, adding only the element “inc.” As has been established in previous cases, such additional elements are “insufficient to ward off the spectre of confusing similarity” (see, for example, Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046). Moreover, the gTLD “.com” does not add any distinctiveness because it is a technical requirement of registration. See Fendi S.r.l. v. Ndiaye Therese,WIPO Case No. D2018-0179; Gallerie degli Uffizi v. Registration Private, Domains By Proxy LLC / BoxNic Anstalt,WIPO Case No. D2018-0166.
The Domain Name is confusingly similar to the trade marks of Complainant. Therefore, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Panel holds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Respondent has not filed a Response. Instead, the named Respondent has provided a signed statement that it did not register the Domain Name and that its identity was misappropriated by an unknown party that did register the Domain Name.
There is no evidence that Respondent is using, or preparing to use, the Domain Name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the Domain Name, that Respondent is making a legitimate noncommercial or fair use of the Domain Name, or that Respondent has consent from Complainant. The Panel considers that the use of the Domain Name in connection with a website advertising articles of clothing is likely to be pretextual and that neither such use, nor the current passive holding of the Domain Name, give rise to any rights or legitimate interests in the Domain Name.
For these reasons, the Panel finds that Respondent’s use does not fall within the circumstances of paragraph 4(c) of the Policy, and that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant states that the Domain Name resolves to a website incorporating Complainant’s marks. The images from the website available in the record did not show Complainant’s marks, other than in the website. The content of the website does not appear to have any connection at all to Complainant, and the motivation for choosing the Domain Name cannot be discerned from the content of the website, which appears to be photos of women in fashionable clothing and a reference to “Adeeva by Junai.” There is no indication that the Domain Name is for sale or that pharmaceutical products by Complainant or any other company are being offered through the website.
Nonetheless, the circumstances of registration and subsequent use tend to indicate bad faith. It is apparent that, in breach of section 6(b) of the Terms of Service with the Registrar Upperlink Ltd, an unknown party purporting to be Respondent registered the Domain Name, using elements of Respondent’s name and address, an unknown United Kingdom telephone number and a Nigerian email address unaffiliated with the named Respondent. For reasons described in the section above, the Panel also considers the use to which the Domain Name has been put to amount to use in bad faith.
Therefore, the Panel is satisfied that the Domain Name was registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy has been 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 Domain Name be transferred to Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: June 7, 2018
1 As detailed in Section 4 of this decision, the record indicates a third party may have used the named Respondent’s name in registering the disputed Domain Name without the named Respondent’s consent. The Panel has accordingly decided to redact the Respondent’s name from the caption and body of this decision. However, the Panel has included in Annex 1 to this decision an instruction to the Registrar which includes the Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the Registrar, and has indicated that Annex 1 is not to be published given the circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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