The Complainant is Sanofi Biotechnology of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States of America (“United States”, “USA” or “US”) / Home of Domains, Domain Admin / This Domain is For Sale of Phoenix, Arizona, United States. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2018. On October 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 October 29, 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 amendment to the Complaint on November 2, 2018.
The Center verified that the Complaint together with the amendment to 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 November 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2018.
The Center appointed Kar Liang Soh as the sole panelist in this matter on December 18, 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 is a fully owned subsidiary of Sanofi, a leading multinational pharmaceutical company based in France. The Complainant operates as a research and development division of Sanofi in the field of biotechnology.
The Complainant owns multiple registrations for the trademark LIBTAYO, including:
Jurisdiction
Trade Mark No.
Class(es)
Registration Date
International
1162460
5
April 4, 2013
International
1239363
5
December 22, 2014
European Union Trade Mark (“EUTM”)
013598941
5
April 6, 2015
USA
4436279
5
November 19, 2013
USA
4785875
5
August 4, 2015
USA
5432812
5
March 27, 2018
In addition, the Complainant owns various registrations for its figurative trademark bearing the word element LIBTAYO SURROUND, including:
Jurisdiction
Trade Mark No.
Class(es)
Registration Date
EUTM
017877181
44
August 31, 2018
USA
5643567
44
January 1, 2019
In particular, the Complainant’s EUTM Registration No. 017877181 was filed at the European Union Intellectual Property Office (“EUIPO”) on March 20, 2018. On the same day (March 20, 2018), the Disputed Domain Name was registered. On or about October 22, 2018, it resolved to a parking page advertising for sale the Disputed Domain Name for USD 950. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s LIBTAYO and LIBTAYO SURROUND (figurative) trademarks. The trademarks are highly distinctive and are wholly incorporated in the Disputed Domain Name. The addition of the generic Top-Level Domain (“gTLD”) suffix “.com” is insufficient to avoid a likelihood of confusion.
2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has neither licensed nor authorized the Respondent to use the Complainant’s LIBTAYO and LIBTAYO SURROUND (figurative) trademarks. There is no relationship between the Complainant and the Respondent. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
3) The Disputed Domain Name was registered and is being used in bad faith. The LIBTAYO and LIBTAYO SURROUND (figurative) trademarks are highly distinctive which suggests that the Respondent is aware of the Complainant’s trademarks. The Respondent’s advertising for sale of the Disputed Domain Name for valuable consideration in excess of its documented out-of-pocket costs amounts to use of the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed in this proceeding, paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements:
(i) The Disputed Domain Name is identical 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
Based on the evidence, the Panel accepts that the Complainant owns rights in the LIBTAYO and LIBTAYO SURROUND (figurative) trademarks due to their registrations worldwide.
The Panel accepts that gTLDs may be disregarded when comparing a disputed domain name to a mark in question. See, e.g., Arkema France v. Pepi Robert,WIPO Case No. D2014-1055. The “.com” suffix of the Disputed Domain Name is a necessary technical feature for the operation of domain names and will therefore not be considered on the issue of confusing similarity.
The textual element of the Complainant’s LIBTAYO SURROUND (figurative) mark is reproduced in the Disputed Domain Name, and differs only by an additional figurative element comprising a blue and gold device made up of two dots encircled by two pairs of curves. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) deals with the assessment of figurative marks at section 1.10 under the heading “How are trademark registrations with design elements or disclaimed text treated in assessing identity or confusing similarity?”, where it is stated:
“Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element. On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity. However where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP.”
The Panel respectfully adopts the consensus view. In the present case, there is no disclaimer of any textual content in the Complainant’s trademark registrations. The textual element LIBTAYO SURROUND is clearly the dominant representation in the mark and the figurative element constitutes a mere embellishment that does not detract in any way from the prominence of the textual element. See, e.g., Marco Aurich v. Johannes Kuehrer, World4You Webservice,WIPO Case No. D2012-1147. As such, the Panel finds that the Complainant’s LIBTAYO SURROUND (figurative) mark is – ignoring the spacing between the words “LIBTAYO” and “SURROUND” and disregarding the gTLD suffix to the Disputed Domain Name – identical to the Disputed Domain Name. In any case, the Panel takes the view that the Disputed Domain Name is confusingly similar to the Complainant’s mark.
Furthermore, the Panel notes that the Disputed Domain Name wholly incorporates the LIBTAYO mark and differs only by the addition of the word “surround”. Moreover, the Panel finds that the word “libtayo” appears to be highly distinctive as it does not appear to be a known word. Consequently, the addition of the term “surround” in the Disputed Domain Name does not detract from the trademark LIBTAYO and does not therefore reduce the confusing similarity between the Disputed Domain Name and the LIBTAYO mark. See, e.g., LEGO Juris A/S v. sakchai srion,WIPO Case No. D2012-0604.
Hence, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In establishing its case under this element, it is sufficient for the Complainant to show a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the burden of production shifts to the Respondent to show evidence of its rights or legitimate interests in order to rebut the Complainant’s presumptions.
The Complainant has provided evidence of its trademark registrations for the LIBTAYO and LIBTAYO SURROUND (figurative) trademarks. The Complainant also confirmed that the Respondent is in no way related to the Complainant and has not been authorized to use the marks. Without any response from the Respondent, there is no evidence to suggest that the Respondent has been or is commonly known by the Disputed Domain Name, or that it owns any rights or legitimate interests in the Disputed Domain Name.
In addition, the website resolved from the Disputed Domain Name led to a webpage offering the Disputed Domain Name for sale. Past UDRP panels have opined that an offer by a respondent to sell a disputed domain name which incorporates a complainant’s trademark may not constitute a bona fide use of the disputed domain name in question. See, e.g., Milliman, Inc. v. Domain Administrator, See PrivacyG / Domain Admin, This Domain is For Sale, Home of Domains,WIPO Case No. D2018-0927. The Panel concedes that such a situation raises suspicions as to whether the use of a disputed domain name was bona fide. As the Respondent has not filed a Response to explain why the Disputed Domain Name was being offered for sale, the only reasonable conclusion that may be fairly drawn by the Panel is that the Respondent’s offer to sell the Disputed Domain Name is not a use of the Disputed Domain Name in connection with a bona fide offering of goods or services.
Hence, the Panel finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which, if fulfilled, constitute evidence of bad faith registration and use under paragraph 4(a)(iii). In particular, paragraph 4(b)(i) states:
“(i) 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”
In finding that the Respondent knew or should have known of the Complainant’s LIBTAYO and LIBTAYO SURROUND (figurative) trademarks and has therefore registered the Disputed Domain Name in bad faith, the Panel takes the following into consideration:
(i) The Complainant owns multiple registrations of the LIBTAYO mark in the US, where the Respondent is based, dating back to 2013;
(ii) The Complainant had also filed a registration of the LIBTAYO SURROUND (figurative) mark in the US before the Respondent registered the Disputed Domain Name;
(iii) The word “libtayo” does not appear to be a known word. The Panel finds the Respondent’s use of such an unknown word in the Disputed Domain Name to be highly unusual. Moreover, the fact that the Disputed Domain Name is registered on the same day as the date of the Complainant’s trademark application to register LIBTAYO SURROUND (figurative) at the EUIPO (March 20, 2018), is too suspicious to be dismissed as mere coincidence. In the absence of cogent reasons explaining otherwise, it is most unlikely that the Respondent was not aware of the Complainant’s LIBTAYO mark and LIBTAYO SURROUND (figurative) mark. (See, e.g., Güde GmbH & Co. KG v. Shanshan Huang,WIPO Case No. D2017-0562).
Furthermore, it is recognized that a respondent’s offer of sale of a disputed domain name for an amount greatly in excess of its documented out-of-pocket costs (i.e. cost of registration) may constitute use of a disputed domain name in bad faith. See, e.g., Brioni S.p.A. v. Steve Timani, Tutti Creative Design,WIPO Case No. D2018-0154. In the present case, the Respondent offered the Disputed Domain Name for sale at a price of USD 950, which appears many times higher than the usual out-of-pocket cost of registering a domain name. In the Panel’s view, the Complainant has made a serious but reasonable allegation that this amount is in excess of the Respondent’s documented out-of-pocket costs. Since the Respondent has chosen not to refute this allegation by filing a Response, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(i) of the Policy.
Hence, the Panel finds that the Complainant has satisfied the third and final element of paragraph 4(a) of the Policy. Accordingly, the Complainant has successfully shown that the Respondent has registered and is using the Disputed Domain Name 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.
Kar Liang Soh
Sole Panelist
Date: 22 January 2019
Full & Egal Universal Law Academy