The Complainant is Coloplast A/S, Denmark, internally represented.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Courtney Walton, 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 21, 2021. On April 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 21, 2021, 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 April 22, 2021 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 amendment to the Complaint on April 26, 2021. The Center verified that the Complaint together with the amendment to 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 April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit any response. On May 3, 2021, the Center received an email communication from an individual apparently unconnected to the Respondent who had received the Written Notice at their personal address. On May 18, 2021, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Nicholas Smith as the sole panelist in this matter on May 21, 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 a Danish company that develops, manufactures, and markets medical devices. The Complainant is the owner of trade marks in various jurisdictions consisting of the word “coloplast” (the COLOPLAST Mark”) including an International Registration for the COLOPLAST Mark (Registration No. 883011, registered on May 26, 2005) for goods in classes 3, 5, and 10 designating jurisdictions including the United States, Japan, and France. The Domain Name was registered on July 10, 2020 and does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant states that its COLOPLAST Mark and company name is fully contained within the Domain Name. Rights or legitimate interests The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name noting that the Domain Name contains the Complainant’s name and trade mark. Registration and use in bad faith The Complainant submits that it is likely that the Respondent intends to use the Domain Name to target people looking for jobs with the Complainant, noting that the Complainant had recently resolved a similar complaint involving the domain name The Respondent did not reply to the Complainant’s contentions. However, on May 3, 2021, the Center received an email communication from an individual apparently unconnected to the Respondent who had received the Written Notice at their personal address. This may indicate that the Respondent has used false contact information in the provision of its details to the Registrar. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the COLOPLAST Mark, having a registration for the COLOPLAST Mark as a trade mark in the United States and various other jurisdictions. The Domain Name incorporates the COLOPLAST Mark in its entirety with the addition of the dictionary term “job”. The addition of a dictionary term to a complainant’s mark is insufficient to dispel the confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s COLOPLAST Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the COLOPLAST Mark or a mark similar to the COLOPLAST Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact, there is no evidence of any demonstrable preparations to use the Domain Name at all. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, 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 the 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 registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 of a competitor; or (iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Domain Name was registered over 15 years after the COLOPLAST Mark was registered. The Panel finds, on the balance of probabilities, that the Respondent would have been aware of the Complainant and its reputation in the COLOPLAST Mark at the time the Respondent registered the Domain Name. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the COLOPLAST Mark and the word “job” (a descriptive term for the goods provided by the Complainant under the COLOPLAST Mark) unless, as suggested by the Complainant and not denied by the Respondent, there was an intention to create a likelihood of confusion between the Domain Name and the COLOPLAST Mark for the purpose of targeting people looking for employment with the Complainant. The Panel is prepared to infer, based on the conduct of the Respondent, including the use of false contact details, the passive holding of the Domain Name and the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that combines the COLOPLAST Mark and the word “job”, that the Domain Name is most likely being held pending use as website or email address that, without the license of the Complainant, will offer or make reference to the Complainant in an illicit manner for the Respondent’s commercial gain. As such, the Panel finds that the passive holding of the Domain Name does not prevent a finding of use in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith 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 Domain Name Nicholas Smith
Sole Panelist
Date: May 26, 2021
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