The Complainant is Ferring B.V., Netherlands, represented by Jacobacci Avocats, France.
The Respondent is WhoisGuard, Inc., Panama / Georgina Copeland, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2020. On May 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 May 18, 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 May 22, 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 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2020. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on June 29, 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 is part of the FERRING group. The FERRING group is a biopharmaceutical group founded in 1950, operating in 60 countries and marketing its products in 110 countries. The group’s global turnover in 2019 was more than EUR 1.9 billion. The Complainant has over 350 registrations for its trademarks FERRING and FERRING PHARMACEUTICALS. The Complainant’s trademark FERRING has been registered e.g. as a European Trademark No. 4030193 on September 11, 2006, and as an International Trademark No. 615597 on February 18, 1994. The disputed domain name was registered on December 23, 2019. The disputed domain name resolves to an index website. 5. Parties’ Contentions A. Complainant The disputed domain name incorporates the Complainant’s trademark FERRING in its entirety, the only difference being that there is an extra letter “r” in the disputed domain name. This is a deliberate misspelling of the Complainant’s trademark and is not sufficient to change the overall impression that the disputed domain name is almost identical with the Complainant’s trademark. This kind of misspelling results in typosquatting as it creates a virtually identical mark with the Complainant’s trademark. The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain name, it is not used for bona fide offering of goods or services and the Respondent is not making any legitimate or noncommercial fair use of the disputed domain name. The Complainant has not authorized the Respondent to register the disputed domain name. Also, the Complainant submits that the Respondent did not respond to the Complainant’s two formal notices sent via the email address shown in the Whois details. The Complainant has operated for 70 years and owns more than 350 trademark registrations for its trademarks FERRING and FERRING PHARMACEUTICALS. The reputation of the Complainant’s trademark in the pharmaceutical field has been acknowledged by previous UDRP panels. The Respondent could not have ignored the existence of the Complaint when registering the disputed domain name. The disputed domain name resolves to an index page. Previous UDRP panels have highlighted that an index page is considered as an inactive page. Passive holding of a domain name does not prevent the finding of bad faith. Moreover, any contemplated active use of the disputed domain name would be illegitimate and would lead Internet users to confuse the disputed domain name with the Complainant’s trademark. Finally, the Respondent has used a privacy service to conceal its true identity. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain names are identical or confusingly similar to this trademark. In the disputed domain name, the Complainant’s trademark is included in its entirety, the only exception being that the disputed domain name includes an extra letter “r”. This does not render the names different, especially as the letter “r” is identical with the other two “r” -letters in the Complainant’s trademark. The Panel considers that this is a typical case of typosquatting, see section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name. It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of WIPO Overview 3.0. The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has she been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that [the Respondent has] registered or has 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 the Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or (iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or (iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.” The Panel agrees with previous panels in that the Complainant’s trademark is well known. The Complainant’s trademark had also been used for nearly 70 years when the disputed domain name was registered. By registering a domain name that closely resembles the Complainant’s trademark, it is obvious that the Respondent must have been aware of the Complainant’s when registering the disputed domain name. The disputed domain name currently resolves to an index website. Accordingly, the disputed domain name is not in active use. See e.g. Accenture Global Services Limited v. Domain eRegistration,WIPO Case No. D2018-1994. This, however, does not prevent the finding of bad faith under the doctrine of passive holding. See section 3.3 of WIPO Overview 3.0. Considering that the Panel has found that the Complainant’s trademark and the disputed domain name are almost identical, the Respondent has not responded to the Complaint or to the Complainant’s pre-complaint letters, the Respondent has concealed its identity, and there are no obvious good faith or legitimate interests for the Respondent to register the disputed domain name, the Panel considers, on balance, that the disputed domain name has been registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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 Tuukka Airaksinen
Sole Panelist
Date: July 8, 2020
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