The Complainant is Ferring BV, Netherlands, represented by AARPI Scan Avocats, France.
The Respondent is Cooky22 Godfrey, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Hostinger, UAB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2019, 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 July 24, 2019. On July 26, 2019, a third party contacted the Center by email to claim that its address and name had nothing to do with the Respondent nor the disputed domain name.
In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.
The Center appointed Alistair Payne as the sole panelist in this matter on August 20, 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
The Complainant is a Swiss based pharmaceutical group founded in 1950 that operates worldwide. It owns numerous trade mark registrations throughout the world for its FERRING mark and in particular EUTM 4030193 for FERRING filed on September 16, 2004 and registered on September 11, 2006 and United States trade mark 73515990 for FERRING registered on March 10, 1987. It operates numerous official websites that incorporate its FERRING mark including .
The Respondent who appears to be based in the state of Texas in the United States registered the disputed domain name on 15 April 2019. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns various registered trade mark rights for its FERRING mark including the EUTM and United States registrations noted above. It says that the disputed domain name is a typosquatting of its trade mark in that the FERRING mark is almost entirely reproduced in the disputed domain name, except that the letter “G” is replaced by the letter “Q” instead. The Complainant submits that there is both a visual and a phonetic similarity between the letters “g” and “q” and that “FERRING” and “FERRINQ” are almost identical. This minor difference is insignificant says the Complainant and does not dispel a likelihood of confusion and therefore and not considering the “.com” generic Top-Level Domain (“gTLD”) root, the disputed domain name is confusingly similar to the Complainant’s FERRING registered trade marks.
The Complainant further submits that to the best of its knowledge the Respondent is not currently and never has been known under the name or mark “FERRING”. It notes that the Respondent appears to be using a pseudonym “Cooky22Godfrey” in order to conceal its identity and submits that this is not consistent with legitimate conduct. The Complainant says that it is not aware that the Respondent owns any trade mark registration that is identical or similar to FERRING and has not authorised or permitted the Respondent to use its FERRING mark. It notes that the Respondent is not related to it, is not one of its distributors and does not carry out any activity or business for it. In addition, the Complainant notes that the disputed domain name resolves to an inactive website and as far as the Complainant is aware has never been used by the Respondent. As a consequence, the Respondent cannot assert that he was using or had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant therefore submits that, since it has not authorised the Respondent to to use its trade marks and domain names, this use can only be fraudulent and accordingly the Respondent has no rights or legitimate interests in the disputed domain name.
As far as bad faith is concerned, the Complainant submits that in view of the degree of renown attaching to the FERRING mark and its longstanding worldwide presence the Respondent must have been aware of the Complainant’s FERRING trade mark when it registered the disputed domain name. The Complainant notes that its FERRING marks were registered long before the disputed domain name was registered and that any Internet search for FERRING leads firstly to the Complainant’s various websites. The fact that the disputed domain name with the exception of one letter almost exactly reproduces the Complainant’s mark is indicative, submits the Complainant, that the Respondent has set out to target the Complainant in order to support an illegal intention of impersonating the Complainant.
The Complainant further notes that based on a reverse WHOIS search it has found that the Respondent also registered, on the same day that it registered the disputed domain name, nine other domain names which also infringe third party trade marks and it has provided examples of these registrations in evidence. This says the Complainant is indicative of the Respondent’s registration in bad faith.
The Complainant also submits that the passive holding of the disputed domain name amounts to use in bad faith and notes that the disputed domain name can still be used to create email addresses or to impersonate the Complainant’s identity in order to trap Internet users. It says that its contention in this regard is only reinforced by the Respondent’s use of a pseudonym to conceal its real identity. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights for its FERRING mark, namely EUTM 4030193 for FERRING filed on September 16, 2004, and registered on September 9, 2006 and in United States trade mark 73515990 for FERRING filed on January 1, 1985, and registered on March 10, 1987. The disputed domain name almost entirely reproduces the FERRING mark but the letter “G” is replaced by the letter “Q”. The disputed domain name features no other distinguishing feature and therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark for FERRING and the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that to the best of its knowledge the Respondent is not currently and never has been known under the name or mark “FERRING”. The Panel notes that the Respondent appears to be using a pseudonym “Cooky22Godfrey” in order to conceal its identity and agrees with the Complainant that this is not consistent with legitimate conduct.
The Complainant says that it is not aware that the Respondent owns any trade mark registration that is identical or similar to FERRING and that it has not authorised or permitted the Respondent to use its FERRING mark. It notes that the Respondent is not related to it, is not one of its distributors and does not carry out any activity or business for it. In addition, the Complainant has submitted that the disputed domain name resolves to an inactive website and as far as the Complainant is aware has never been used by the Respondent. As a consequence, the Complainant says that the Respondent cannot assert that he was using or had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant therefore submits that since it has not authorised the Respondent to use its trade marks and domain names this use can only be fraudulent and accordingly the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that this case has not been rebutted by the Respondent. As a result the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
It is apparent that the Complainant’s FERRING trade mark was registered many years before the registration of the disputed domain name and by that date had developed a very substantial reputation in connection with the Complainant’s pharmaceutical business. Based upon the Complainant’s evidence, this included a significant Internet presence such that anyone entering the FERRING trade mark into a search engine would see the Complainant’s websites. In view of this and also considering the degree of distinctiveness of the FERRING mark, the Panel finds that it is more likely than not that the Respondent was well aware of the Complainant’s FERRING mark and business at the date of registration of the disputed domain name.
The disputed domain name does not resolve to a website and it appears that it has been held passively since its registration. Panels have found that the non-use of a disputed domain name will not prevent a finding of bad faith in appropriate circumstances. The relevant factors are set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition and include a consideration of (i) the degree of distinctiveness or reputation of the Complainant’s mark; (ii) the failure of the Respondent to submit a response or to provide evidence of actual or contemplated good faith use; (iii) the Respondent’s concealment of its identity or provision of false contact details and (iv) the implausibility of any good faith use to which the disputed domain name may be put.
In this case the Complainant’s FERRING mark has, in the Panel’s view, a high degree of distinctiveness and through use over many years has developed a considerable degree of reputation and goodwill. The Respondent has failed to provide any explanation for its registration of the disputed domain name and it certainly appears to the Panel that the name “Cooky22Godfrey is more likely than not to be a pseudonym in order to hide its identity”. Finally, in view of the distinctive nature of the FERRING mark and the manner in which the last letter of the mark has been changed to the letter “q” in the disputed domain name, which looks and sounds similar to a “g”, it seems to the Panel that this is likely to be a case of typosquatting in which the Respondent intended to use the disputed domain name in bad faith for its own commercial ends. This conclusion is only reinforced by the evidence submitted by the Complainant of the Respondent having registered various other domain names that are apparently based on established trade marks on the same day.
In these circumstances the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint also succeeds under this element 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.
Alistair Payne
Sole Panelist
Date: August 27, 2019
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