The Complainant is Septodont ou Septodont SAS ou Specialites Septodont, France, represented by Novagraaf France, France.
The Respondent is Dugan Morgan, 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 July 10, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2020, 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 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2020. The Center appointed Federica Togo as the sole panelist in this matter on August 20, 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 It results from the Complainant’s undisputed allegations that the Complainant is a French company established on November 30, 1955 and active in the dental field. It further results from the undisputed evidence provided by the Complainant that it is the registered owner of several trademarks consisting of or containing the term “septodont”, e.g. International Registration No. 144537 SEPTODONT (verbal) registered on December 19, 1949 for pharmaceutical and hygienic products in class 5 and designating several countries worldwide. This mark has been duly renewed and is in force. It results from the information disclosed by the Registrar that the disputed domain name was created on September 11, 2019. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its widely known trademark SEPTODONT, since the only difference between the disputed domain name and the Complainant’s mark is that the disputed domain name replaces the letter “t” with the letter “l”. Considering all the above, the Complainant states that Internet users will think the disputed domain name belongs to the Complainant or has been registered in its name. The Complainant concludes that Internet users could think that this domain name is used by members of SEPTODONT. It further results from the Complainant’s undisputed contentions that the Respondent has no prior rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not known by the name “seplodont” and has no right or legitimate interest in this name, which does not correspond to its company name or to any trademarks it may have. Furthermore, the Respondent is not linked to the Complainant’s activity and has no license or authorization to use the trademark SEPTODONT. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent has created an email address in order to send fraudulent emails to customers, services providers, suppliers, pretending to be the Complainant to collect orders in the name of the company or share information’s about it. Furthermore, the Complainant submits that the Respondent could not be unaware of the existence of the Complainant’s well-known trademark. By using the disputed domain name, the Respondent knowingly tried to make a profit pretending to be the Complainant, by creating a probability of confusion with it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of various trademarks for and/or including the term SEPTODONT. Reference is made in particular to International Registration No. 144537 SEPTODONT (verbal) registered on December 19, 1949 for pharmaceutical and hygienic products in class 5 and designating several countries worldwide. This trademark registration predates the creation date of the disputed domain name, which is September 11, 2019. The disputed domain name Moreover, this Panel emphasizes that the case at hand is a typical case of “typosquatting”, which occurs when a domain name consists of a misspelling of the complainant’s trademark. According to the consensus view of UDRP case-law, a domain name which consists of a common, obvious or intentional misspelling of a trademark normally is found to be confusingly similar to such trademark, where the domain name contains sufficiently recognizable aspects of the relevant mark (see Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073; Edmunds.com, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; Hello Body GmbH v. Contact Privacy Inc. Customer 0157402315 / Presko Digital, Hellobody,WIPO Case No. D2020-1447; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.9 with further references). In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark SEPTODONT or the registration of the disputed domain name. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. In addition, it results from the undisputed evidence before the Panel that the disputed domain name is used for sending fraudulent emails. UDRP panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0 at section 2.13.1 with further references). In the case at hand, the Complainant submitted substantial evidence of such illegal activities by providing email correspondence sent from an email account under the disputed domain name. This email correspondence has been signed in the name of “SEPTODONT” with the Complainant’s address. The Panel considers this evidence as sufficient to support the Complainant’s credible claim of illegal Respondent activity. It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of those circumstances is the one specified in paragraph 4(b)(iv), i.e. where the domain name is used to intentionally attempt 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. This Panel approves the approach taken by previous UDRP panels following which the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g. to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see WIPO Overview 3.0 at section 3.4). As explained above, it results from the undisputed evidence submitted by the Complainant that the disputed domain name has been used for sending fraudulent emails in the name of the Complainant by using its company name and address in order to solicit payment. In addition, the use of the disputed domain name in such an illegal scheme additionally demonstrates that the Respondent not only knew of the Complainant, its business and marks, but also attempted to pass itself off as the Complainant (see Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted,WIPO Case No. D2018-0645; Jcdecaux SA v. Whois Privacy Protection Foundation / Anderson Paul,WIPO Case No. D2019-1143). Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the disputed domain name is a case of typosquatting (see Hello Body GmbH v. Contact Privacy Inc. Customer 0157402315 / Presko Digital, Hellobody,WIPO Case No. D2020-1447; see also WIPO Overview 3.0 at section 1.9); and (2) the Respondent did not provide any response with conceivable explanation of its behavior. Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, 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 Federica Togo
Sole Panelist
Date: September 1, 2020
Full & Egal Universal Law Academy