The Complainant is Ferring BV, Switzerland, represented by SCAN Avocats, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“U.S.”) / MIGUEL ANGEL MORENO, Argentina. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2019. On September 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 5, 2019, 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 September 10, 2019 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 September 16, 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 the Respondent of the Complaint, and the proceedings commenced on September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2019. The Center appointed Nicholas Weston as the sole panelist in this matter on October 17, 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 Switzerland headquartered multinational group pharmaceutical business with operations in 56 countries, around 6,500 employees and annual sales of nearly CHF 2,3 billion or EUR 1,9 billion. The Complainant holds registrations for the trademark FERRING in numerous countries internationally including Switzerland, which it uses to designate pharmaceutical products and substances, and medical apparatus and instruments. The European Union trademark registration No. 004030193 (for pharmaceutical preparations) was registered on September 11, 2006. It has owned the domain name The Respondent registered the Disputed Domain Name The Complainant cites amongst others, its European Union trademark registration No. 004030193 for the mark FERRING in various countries as prima facie evidence of ownership. The Complainant submits that the mark FERRING is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “the Complainant has never given any authorization or permission whatsoever (to the Respondent) to register or to use the disputed domain name” and there is no “evidence showing that the Respondent has used or made preparations to use the disputed domain name”. Finally, the Complainant alleges that the registration and passive use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark FERRING in Switzerland and in many countries throughout the world. The Danish registration, for example, was filed on June 2, 1982. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the FERRING trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark FERRING followed by (b) the letters “srl” (c) followed by the generic Top-Level Domain (“gTLD”) “.com”, all in one continuous domain name. It is well-established that the gTLD used as part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “ferringsrl”. It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it can be confusingly similar to that mark despite the addition of words or numbers such as, in this case, “srl”: (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, supra). In many countries, the letters “srl” connote the designation of a legal entity similar to a U.S. Limited Liability Company (LLC), that may be observed to be appended to the end of company names: “Sociedad de Responsabilidad Limitada (Spanish); In line with previous UDRP panels decisions, this Panel accepts that the addition of the letters “srl” is most likely to be understood as an acronym describing a type of company that, when combined with a registered trademark, does nothing to dispel the confusing similarity (see Siemens AG v. Contact Privacy Inc. Customer 0134792265 / siemens srl Societa/Ditta,WIPO Case No. D2014-1155; Aventis, Aventis Pharma SA. v. Dac Hung Nguyen,WIPO Case No. D2004-0252; Sparco Srl v. Mr. Alexander Albert W. Gore / Ukrainian Cat. University,WIPO Case No. D2003-0448). The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”, section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has “never given any authorization or permission whatsoever to register or to use the Disputed Domain Name” and “this absence of relationship or authorization is even more objectionable since the Respondent used the domain name to resolve to an inactive website”. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. The Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both. The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark FERRING is well known. The uncontested evidence is that “any search for ‘FERRING’ conducted with a search engine such as Google leads in the first place to websites relating to the Complainant and its products”. There is no evidence or reason to infer that such a search was ever made by the Respondent. This Panel finds that the choice made by the Respondent of combining the Complainant’s name and the suffix “srl” connoting a type of legal entity demonstrates actual knowledge of the Complainant and its trademark. Further, a gap of ten years between registration of a Complainant’s trademarks and Respondent’s registration of the Disputed Domain Name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name more than three decades after the Complainant established trademark rights in the FERRING mark. On the issue of use, the evidence is that the Disputed Domain Name resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent. WIPO Overview 3.0, section 3.3 indicates that factors that have been considered by previous UDRP panelists as relevant in determining whether the non-use of a domain name may prevent a finding of bad faith include: “(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 any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Each of these factors are present in this case also. In the absence of a response, the inference is there to find and the Panel does so find such conduct as constituting bad faith and also, involving as it does conduct that may reduce confidence amongst potential consumers in a supplier of pharmaceuticals, against the public interest. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Nicholas Weston
“Société à Responsabilité Limitée” (French);
“Società a Responsabilità Limitata” (Italian);
“Societate cu Răspundere Limitată” (Romanian);
“Society with Restricted Liability” (Barbados).
Sole Panelist
Date: October 22, 2019
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