Complainant is Ferring B.V., Netherlands, represented by Jacobacci Avocats, France.
Respondent is VistaPrint Technologies, c/o Vistaprint North American Services Corp., Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2019. On June 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 10, 2019.
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 June 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 2, 2019.
The Center appointed Ingrida Karina-Berzina as the sole panelist in this matter on July 11, 2019. 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 part of a group of companies that comprise a biopharmaceutical group specializing in reproductive medicine, women’s health and specialty areas within gastroenterology and urology. The Ferring group was founded in 1950 and employs 6,500 people worldwide, marketing products in 110 countries and operating subsidiaries in nearly 60 countries. The group’s headquarters are located in Switzerland.
Complainant is the proprietor of numerous trademark registrations, including the following:
- United States of America (“United States”) trademark No. 4054349 for FERRING PHARMACEUTICALS (combined mark) in classes 5, 9, 16, and 41, registered on November 15, 2011;
- United States trademark No. 4054348 for FERRING PHARMACEUTICALS (combined mark) in classes 5, 9, 16, and 41, registered on November 15, 2011;
- European Union trademark No. 1275686 for FERRING PHARMACEUTICALS (combined mark) in classes 5, 10, 42 and 44, registered on September 24, 2015;
- European Union trademark No. 14570931 for FERRING PHARMACEUTICALS (combined mark) in classes 5, 10, 42, and 44, registered on January 11, 2016.
Complainant operates its main website at the domain name and is the registrant of numerous related domain names comprising the word “ferringpharmaceuticals.”
Respondent registered the Domain Name on August 29, 2018. The Domain Name currently does not resolve to an active website. 5. Parties’ Contentions A. Complainant
In respect of the first element, Complainant alleges that the Domain Name is confusingly similar to its FERRING PHARMACEUTICALS trademark (the “Mark”), which is protected by numerous trademark registrations. The withdrawal of the final “s” in the Domain Name does not preclude a finding of confusing similarity, nor does the addition of the “international” to the Mark. Due to the similarities between the distinctive parts of the sign, and the fraudulent activities of Respondent impersonating Complainant in e-mails, the consumer may be misled.
In respect of the second element, Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not related to nor affiliated with Complainant, nor has Complainant authorized the use of the Domain Name. Rather, Respondent has effected a fraudulent scheme using the Domain Name to the detriment of Complainant.
In respect of the third element, Complainant states that, immediately after registering the Domain Name, Respondent created several email addresses based on the Domain Name and sent e-mails mentioning Complainant’s name and referencing the postal address of Complainant in the United States to recipients who were lawyers. In the e-mails, Respondent purported to make commercial offers and sought to have the recipients perform certain actions. Such actions demonstrate that Respondent was perfectly aware of Complainant when registering the Domain Name. The Domain Name was not used for any bona fide offering of goods, but rather has been used in bad faith to send fraudulent e-mails. B. Respondent
As stated above, Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the mark FERRING PHARMACEUTICALS, through at least United States, international and European Union trademark registrations, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name wholly incorporates and is confusingly similar to Complainant’s Marks. The lack of the letter “s” does not alter this conclusion, nor does the addition of the purely descriptive term “international”.
It is the well-established view of previous UDRP panels that the addition of a generic Top-Level Domain (“gTLD”) to a disputed domain name does not prevent the disputed domain name from being confusingly similar to complainants’ trademarks (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee of Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Name or is pursuing a legitimate business activity under this name. Complainant’s rights in the Mark predate the registration of the Domain Name by many years.
The Domain Name resolves to an inactive website, but the Domain Name was used by Respondent to perpetuate a scheme to impersonate Complainant through numerous e-mails to various attorneys impersonating Complainant to allegedly seek legal representation for Complainant. Such use cannot support a finding of rights or legitimate interests in the Domain Name.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei,WIPO Case No. D2015-1458). Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of fair use of Complainant’s Mark.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of impersonating Complainant. Complainant’s rights in the FERRING PHARMACEUTCIALS Mark predates the registration of the Domain Name. The Domain Name contains Complainant’s Mark in its entirety with an insignificant alteration and the addition of the non-distinctive term “international.” There can be no question that Respondent chose the Domain Name in full awareness of Complainant’s Mark.
Further, the Domain Name and the name of Complainant feature prominently in fraudulent correspondence in which Respondent purported to be an executive of Complainant seeking legal representation for a transaction by Complainant. Said correspondence features the name and address of Complainant’s United States subsidiary. In the view of the Panel, such circumstances, taken together, indicate that Respondent used the Domain Name for the purpose of attempting to assume the identity of a Ferring Pharmaceuticals official. While the exact purpose of this conduct is not clear, such conduct leads to a legitimate presumption that Respondent has attempted to improperly derive gains from using the Domain Name or that Respondent is attempting to harm Complainant. In either case, such conduct is in clear breach of the Policy and manifestly demonstrates bad faith.
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: July 25, 2019
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