The Complainant is Laboratoire Polidis, France, represented by Novagraaf France, France.
The Respondent is Contact Privacy Inc. Customer 1243132597, Canada / Michael Beauton, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2020, 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 April 29, 2020 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 April 29, 2020. 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 May 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was originally June 7, 2020. On May 18, 2020, the Respondent sent an email communication to the Center. On May 19, 2020, the Center informed the Parties of the possibility to suspend the proceeding to explore settlement options. On May 19, 2020 and May 20, 2020, the Complainant sent four email communications to the Center. On May 20, 2020, the Complainant requested suspension of the proceeding pursuant to the Rules, paragraph 17. On May 20, 2020, the Center confirmed that the administrative proceeding was suspended until June 19, 2020 for purposes of settlement discussions concerning the disputed domain name. On May 26, 2020, the Complainant sent an email communication to the Respondent. The Center sent an email communication to the Parties on May 26, 2020. From May 28, 2020 to June 15, 2020, the Complainant sent email communications to the Respondent. On June 15, 2020, the Center sent a reminder to the Parties regarding the end of the suspension of the proceeding. On June 15, 2020, the Complainant sent an email communication to the Center to which the Center acknowledged receipt on June 16, 2020. The present proceedings were reinstituted as of June 22, 2020. The Response due date was July 10, 2020. The Respondent did not formally submit any response. Accordingly, the Center informed the Parties of the commencement of the panel appointment process on July 13, 2020. The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 27, 2020. 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’s company name, Laboratoire Polidis, was registered in France on June 26, 2006, and has since operated in the field of medical devices, including condoms, pregnancy and ovulation tests, pain relief and a range of products for the treatment of head lice. The Complainant owns trademark registrations for the mark POLIDIS, including the following: France Trademark Registration No. 3659098 for POLIDIS filed and registered on June 22, 2009; The Complainant also owns and operates the domain name The disputed domain name The Complainant submits that the disputed domain name replicates the Complainant’s registered trademark POLIDIS in its entirety. The addition of generic Top Level Domain (“gTLD”) “.net” does not distinguish the disputed domain name from the Complainant’s registered trademark and is therefore confusingly similar. The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the POLIDIS trademark or name. The Complainant has not authorized, licensed or permitted the Respondent to use or register its registered trademark. Respondent has registered and used the disputed domain name in bad faith. The Respondent has registered a confusingly similar domain name, has hidden the Respondent’s identity through privacy protection, has not used the disputed domain name in association with a bona fide offering of goods and services, but rather has used the disputed domain name in connection with an inactive website. The Complainant sent a cease and desist letter to the Respondent on April 29th, 2020, but the Respondent did not reply at that time. This passive holding of the confusingly similar disputed domain name interferes with the Complainant’s business and is not a bona fide offering of goods or services. B. Respondent The Respondent did not make any formal reply to the Complainant’s contentions. However, the Respondent sent an informal communication to the Center on May 18, 2020 regarding possible settlement. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interest 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 The Panel finds that the Complainant does have registered trademark rights in the trademark POLIDIS by virtue of the registrations referenced in paragraph 4 of this Decision. The Panel finds that the disputed domain name is virtually identical to the Complainant’s trademark as the disputed domain name incorporates the POLIDIS trademark in its entirety. The applicable gTLD “.net” in the disputed domain name is a standard registration requirement and as such may be disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview 3.0, section 2.1: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the POLIDIS trademark as noted in section 4 of this Decision. The Panel acknowledges that the Complainant’s POLIDIS trademark is well known and unique, and accordingly it is unlikely that the Respondent was unaware of the Complainant’s trademark rights when he registered the disputed domain name. In the circumstances of this case, the composition of the disputed domain name, incorporating the entirety of the Complainant’s trademark, reveals an intention to capitalize on the Complainant’s goodwill and reputation. See WIPO Overview 3.0, section 2.5.1. In these circumstances, the Respondent’s use of the virtually identical domain name in association with an inactive website is not a bona fide use of the disputed domain name under the Policy. As a result, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not formally respond to the Complaint. Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name which replicates the Complainant’s unique and well-known POLIDIS trademark in order to divert internet users seeking the Complainant’s website. The Respondent’s conduct supports a finding that the Respondent targeted the Complainant’s POLIDIS trademark and its business, which were well known long before the registration of the disputed domain name, by using the confusingly similar disputed domain name in association with an inactive website. The passive holding of the disputed domain name does not prevent a finding of bad faith in this case, noting the distinctiveness of the Complainant’s trademark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, the Respondent’s concealing its identity, and the implausibility of any good faith use to which the disputed domain name may be put. See WIPO Overview 3.0, section 3.3. The Panel finds there is sufficient evidence of bad faith under the Policy. The Complainant has therefore satisfied the requirements under 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 Christopher J. Pibus
France Trademark Registration No. 1685303 for POLIDIS filed and registered on August 6, 1991;
European Union Trademark Registration No. 8746794 for POLIDIS filed on December 10, 2009 and registered on July 5, 2010; and
International Trademark Registration No. 1339765 for POLIDIS registered on June 16, 2016.
Sole Panelist
Date: August 6, 2020
Full & Egal Universal Law Academy