The Complainant is Omega Pharma Innovation & Development NV, Belgium, internally represented.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Firat Dicle, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2020. On November 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 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 November 30, 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 December 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021. The Center appointed Olga Zalomiy as the sole panelist in this matter on January 22, 2021. 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 group of companies, involved in marketing prescription-free pharmaceutical products as well as general self-care and day to day hygienic products. The Complainant owns the following trademark registrations and applications: - Benelux trademark NERVIXEN No. 1422423 filed on August 4, 2020 and registered on November 17, 2020, claiming priority of the European Union Trade Mark (“EUTM”) application No. 018235220 filed on May 7, 2020, and, - EUTM application NERVIXEN No. 018235220 filed on May 7, 2020. The Respondent registered the Domain Name The Complainant argues that the Domain Name is identical to the NERVIXEN trademark, in which the Complainant has rights because the Domain Name identically reproduces its registered Benelux trademark NERVIXEN. The Complainant asserts that a worldwide search on the trademark database TrademarkNow of the word “Nervixen” returns only trademarks NERVIXEN owned by the Complainant. The Complainant contends that the Respondent has no trademark right in the term NERVIXEN. The Complainant alleges that it has not licensed or authorized the Respondent to use the trademark NERVIXEN or to register the Domain Name. The Complainant infers that the Respondent is not commonly known by the name or brand NERVIXEN. The Complainant contends that the Respondent registered the Domain Name with the knowledge of the Complainant’s recently filed EUTM application, with no intention to use it in connection with a bona fide offering of goods or services but with the sole purpose of selling it to the Complainant. The Complainant argues that the Domain Name was registered with the sole purpose of selling it to the Complainant for consideration higher than the Respondent’s out-of-pocket expenses. The Complainant contends that the choice of a “.com” domain name prevents the Complainant from reflecting its trademark in the most used generic Top-Level Domain (“gTLD”). The Complainant argues that the Domain Name is offered for sale for USD 990, the amount that was chosen to entice it to buy the Domain Name because the sale price is lower than the UDRP fees. The Complainant contends that the Respondent is engaged in a pattern of registering and selling domain names based on the European Union trademark applications published on the European Union Intellectual Property Office (“EUIPO”) website and that it is targeting the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the 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 Domain Name; and (iii) the Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant owns a trademark registration for the NERVIXEN trademark. Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. While the Domain Name was registered prior to the Complainant’s registration of the mark, it “does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element.”1 Therefore, while the Domain Name registration predates the Complainant’s trademark registration, the Complainant has standing in this case. The Panel finds that the Domain Name is identical to the Complainant’s NERVIXEN trademark. The Domain Name consists of the Complainant’s NERVIXEN trademark and the gTLD “.com”. It is well-established that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement2 . Thus, the Domain Name is identical to the Complainant’s trademark. The Panel finds that the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the UDRP: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel accepts that the Complainant has not licensed or permitted the Respondent to use the Complainant’s NERVIXEN trademark in domain names, or for any other purpose. There is no evidence that the Respondent has not been commonly known by the Domain Name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. There is no evidence of that the Respondent has made demonstrable preparations to use the Domain Name, nor is there any evidence that the Respondent is using the domain name in connection with a bona fide offering of goods and services or fair, noncommercial use of the domain name. The Domain Name resolves to a website that displays an offer to buy the Domain Name for USD 988. The Domain Name is identical to the word “Nervixen”, which is not a generic, common or dictionary word. In the absence of any explanations from the Respondent, the Panel, therefore, accepts the Complainant’s contention that the Respondent registered the Domain Name with the knowledge of the Complainant’s recently filed EUTM application, with no intention to use it in connection with a bona fide offering of goods or services but with the sole purpose of selling it to the Complainant. For the reasons stated, the Panel finds that the Complainant has made out the prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Domain Name. Once a complainant makes a prima facie case, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Respondent has failed to do so. Thus, the Panel concludes that the Complainant has satisfied the second element of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. Generally, “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”. 3 However, “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith”. 4 Among others, such scenarios include registration of a domain name following the complainant’s filing or a trademark application.5 Here, the Domain Name was registered on May 7, 2020, on the same day when the Complainant filed its EUTM application for registration of the NERVIXEN mark. Shortly thereafter, the Respondent listed the Domain Name for sale at USD 988. In absence of any explanations from the Respondent or any other plausible explanations, the Panel accepts the Complainant’s contention that the Respondent tracked EUTM applications and registered the Domain Name with the intent to sell it to the Complainant. Therefore, the Respondent registered and is using the Domain Name in bad faith. The Complainant contends that the Respondent is engaged in a pattern of registering and selling domains based on the EUTM applications published on the EUIPO website and that is targeting the Complainant. The evidence shows that two domain names were registered identical to the Complainant’s trademarks with the Registrar on the date the Complainant filed its applications for trademark registrations with the EUIPO. One of the domain names resolved to a website displaying an offer to sell it for USD 988, identical to the website connected to the Domain Name. The Panel finds that on the balance of probabilities it is plausible that the Respondent was involved in a pattern of bad faith behavior, which is another evidence supporting a finding of bad faith registration and use. The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and is using the Domain Name in bad faith. 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 Domain Name Olga Zalomiy 1 Section 1.1.3, WIPO Overview 3.0. 2 Section 1.11.2, WIPO Overview 3.0. 3 Section 3.8.1, WIPO Overview 3.0. 4 Section 3.8.2, WIPO Overview 3.0. 5 Id.
Sole Panelist
Date: February 9, 2021
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