The Complainant is Valeant Pharmaceuticals Ireland Limited of Dublin, Ireland, represented by Harter, Secrest & Emery, LLP, United States of America (“Unites States”).
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Micro Duobri, New Micro Age of Miami, Florida, United States. 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 August 17, 2018. On August 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 27, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. The Respondent sent email communications on August 29 and September 13, 2018. The Respondent requested for an extension of response due date on September 18, 2018. Accordingly, the due date for Response was extended to September 22, 2018. The Respondent did not submit any formal response. The Center notified the Parties of the Commencement of Panel Appointment Process on September 24, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 5, 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is incorporated in Ireland. It is a pharmaceutical company.
The Complainant has developed a skin care product for treatment of certain skin disorders which it has named Duobrii. It owns United States Trademark Application for the trademark DUOBRII with Application Serial No. 87,022,970 for (amongst other things) “Pharmaceutical preparations and substances for use in dermatology and skin disorders, skin conditions and skin care”. This application was filed on May 3, 2016.
“Duobrii” is a made-up word with no other meaning, coined by the Complainant for its product.
The Disputed Domain Name was registered by the Respondent on May 7, 2016. It resolves to a parking page provided by the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Disputed Domain Name is identical to its trademark DUOBRII in which it clearly has rights. It relies on its trademark application and common law rights in the term DUOBRII.
The Respondent has no rights or legitimate interests in the term “DUOBRII”. There is no other meaning associated with “DUOBRII” other than in relation to the Complainant’s product and it has not licensed or authorised the Respondent to use that term.
The Disputed Domain Name was registered and is being used in bad faith. In this respect the Complainant relies upon the Respondent having registered the Disputed Domain Name just after the Complainant’s trademark filing, which it says shows knowledge of the Complainant’s trademark. It also relies on the Respondent’s passive holding of the Disputed Domain Name and various UDRP decisions that hold that this amounts to bad faith. B. Respondent
As indicated above the Center received email correspondences from the Respondent including a request for an extension of time. Ultimately however no formal Response was filed. The email communications did not address the substance of the Complaint. Accordingly this is a case in which the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Matters
The Panel notes this is a case where one of the named Respondents (Domains by Proxy LLC.) appears to be a privacy or proxy registration service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.
In the present case the Panel finds the substantive Respondent to be Micro Duobri, New Micro Age– and references to the Respondent should be understood as being to that person.
The Panel also notes that no Response has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Further the correspondence received by the Center (above) shows he respondent was aware of the Complaint. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In general a pending trademark application does not amount to rights for the purposes of the Policy - see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.1. However the Complainant’s evidence shows significant publicity and specialist press comment about its DUOBRII product which in the Panel’s view establishes common law rights in the term DUOBRII for the purpose of the UDRP. The Panel reaches this view bearing in mind that the term DUOBRII is a coined word with no other meaning (see FinanceMalta v. Adriano Cefai, WIPO Case No. D2011-1246) and the Panel is satisfied that prior to the registration of the Disputed Domain Name the term was recognised in the pharmaceutical industry as relating to the Complainant’s product. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 “even if Complainant’s mark acquired goodwill and reputation only in a limited academic field, this would still be sufficient to establish common law trademark rights within the meaning of paragraph 4(a)(i) of the Policy.” See also Fairview Commercial Lending, Inc. v. Aleksandra Pesalj,WIPO Case No. D2007-0123.
The Disputed Domain Name is identical to the DUOBRII trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, is not generally taken into account for the purpose of determining whether a domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s common law trademark. Therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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 the Respondent 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the DUOBRII trademark. The Complainant has prior rights in the DUOBRII trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
For the complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
The Panel finds it hard to find any plausible explanation for a good faith registration of the Disputed Domain Name given this occurred four days after DUOBRII trademark application was filed by the Complainant.
The obvious inference is that the Respondent is engaged in a practice of speculatively registering domain names which correspond to filed trademark registrations and then hopes to sell those domain names to the trademark owner. That amounts to evidence of registration and use in bad faith within paragraph 4(b)(i) of the Policy: “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”
As no Response has been filed the Respondent has not rebutted this inference.
Further the Panel finds it difficult to conceive of any use which the Respondent could make of the Disputed Domain Name which would be legitimate. Again the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Nick J. Gardner
Sole Panelist
Date: October 19, 2018
Full & Egal Universal Law Academy