The Complainant is Coloplast A/S, Denmark, represented internally.
The Respondent is Jamin Brahmbhatt, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2021, 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 August 27, 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 August 27, 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 August 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2021. The Response was filed with the Center on September 21, 2021 (CEST time).
The Center appointed Adam Taylor as the sole panelist in this matter on September 30, 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 BackgroundThe Complainant is a multinational company supplying medical devices including penile implants. It operates a website at “www.coloplast.com”.
The Complainant owns International Registration No. 883011 for COLOPLAST, registered on May 26, 2005, in classes 3, 5, and 10.
The Respondent is an urologist and robotic surgeon. He registered the disputed domain name on August 6, 2021.
The Complainant sent a legal letter to the Respondent on August 9, 2021.
5. Parties’ Contentions A. ComplainantThe Complainant says simply that the disputed domain name is confusingly similar to its trade mark, which is fully contained with the disputed domain name, that the Respondent lacks rights or legitimate interests because “Coloplast” is the Complainant’s trade mark and company name, and that the disputed domain name was registered and used in bad faith because it was being used for a website promoting medical services.
B. RespondentThe following is a summary of the Respondent’s contentions.
The Respondent is president of the Florida state urological society and is respected by his peers and patients. The Respondent provides care to men affected by erectile dysfunction, including penile implants.
The Respondent is also a philanthropist. He co-founded a large men’s health movement called “Drive 4 Men’s Health”.
The Respondent is not a cyber-squatter or domain name dealer. He has owned other domain names for some 10 years without complaint.
The disputed domain name is not identical or confusingly similar to the Complainant’s trade mark.
While the disputed domain name includes the word “coloplast” and the goods and services for which the Complainant’s mark is registered include “prosthesis”, the latter do not include “penile” or “implant”.
The fair use doctrine, consistent with the United States First Amendment, protects the rights of society at large to use protects the rights of society at large to use words in their primary descriptive sense and allows a fair use defence when the name is used fairly and in good faith to describe goods or services
Nominative fair use also applies as the Respondent is not using the disputed domain name to offer his own personal goods or services.
In accordance with a United States Supreme Court case, the Respondent does not have the burden of proving that confusion is unlikely; rather, the Complainant must first establish likelihood of confusion and, if so, the Respondent can then present evidence that its use constitutes fair use.
In this case, the Respondent’s evidence establishes that the Respondent’s use of “coloplast” meets fair use criteria.
The Respondent possesses rights or legitimate interests in respect of the disputed domain name.
The Complainant has carried out no research into the Respondent’s background. If so, this would have revealed that the Respondent had an interest in sexual/erectile health and in raising awareness and providing education about prevention and treatments available for erectile issues.
The Complainant has provided no evidence of preparations to use the disputed domain name to sell any specific goods or services. The disputed domain name has not been used in any marketing material and, contrary to the Complainant’s claim, it has not been linked to any website. There is also no proof of intent to use the disputed domain name for commercial gain or to tarnish the Complainant’s trade mark or services. Given the lack of such evidence, the Complainant has failed to establish the second element.
The Respondent did not register or use the disputed domain name in bad faith.
The Respondent did not register the disputed domain name for sale to the Complainant. The Respondent is not a direct competitor of the Complainant and has no intention of disrupting the Complainant’s business. The Respondent uses the Complainant’s products on his patients and has been its loyal customer for ten years.
The Complainant has provided no evidence that the Respondent has intentionally attempted to attract Internet users for commercial gain, so as to create a likelihood of confusion with the Complainant’s mark. Given the lack of such evidence, the Complainant has failed to establish the third element.
6. Discussion and FindingsUnder the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has established rights in the mark COLOPLAST by virtue of its registered trade mark.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the phrase “penile implant” does not prevent a finding of confusing similarity.
It does not assist the Respondent that the words “penile” and/or “implant” do not appear in the specification of goods and services in the Complainant’s trade mark. Section 1.7 of the WIPO Overview 3.0 explains that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. See also section 1.1.2 of WIPO Overview 3.0 to the effect that the goods and/or services for which the mark is registered are not considered relevant to the first element test.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has made the necessary assertions, albeit briefly, and the burden of production has shifted to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
The Respondent relies on “fair use” and “nominative fair use” of the disputed domain name. Section 2.8 of WIPO Overview 3.0 explains how panels assess claims of “nominative (fair) use” by resellers or distributors under the UDRP.1 However, it is unnecessary to consider such matters given the lack of evidence of demonstrable preparations to use, let alone of actual use of, the disputed domain name. As explained in section 2.2 of WIPO Overview 3.0, where a respondent relies on future plans, clear contemporaneous evidence of bona fide pre-complaint preparations is required. While, depending on the circumstances, such evidence may not need to be particularly extensive, it must go beyond a mere statement of a claimed intention. Here, not only has the Respondent provided no such evidence, it has not actually explained how it intends to use the disputed domain name. See further in section 6.C below.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithIn the Panel’s view, it is appropriate to consider this case in the context of the principles of “passive holding”. Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.
While the Complaint is thin and it claims, without evidence and wrongly, that the Respondent has used the website for a website promoting medical services, the Complainant has at least established that the Respondent has registered the disputed domain name comprising the Complainant’s distinctive trade mark plus a description of the Complainant’s product. In the Panel’s opinion, that at least calls for an explanation by the Respondent.
However, the Panel notes that the Respondent has not clearly stated his purpose in registering the disputed domain name.
The Respondent says that, as a surgeon specialising in sexual health and penile implant procedures, his intention was to describe a product that only two companies distribute in the United States, namely a penile implant for men with erectile dysfunction. But the disputed domain name does not simply consist of the descriptive phrase “penile implant”; it includes the distinctive name and trade mark of one of those companies, namely the Complainant. Why?
The Respondent says that, if the Complainant had researched the Respondent, it would have discovered that the Respondent had an interest in raising awareness and providing education about prevention and treatments available for erectile issues. If, by this, the Respondent means that he intends to use the disputed domain name for some sort of noncommercial information site and that the Complainant should have divined that, then he ought to have said so, and explained exactly what he had in mind, with supporting evidence. However, even if the Respondent did intend to use the disputed domain name for a noncommercial information site, it is still difficult to see how the Respondent could avoid creating a high risk of implied affiliation with the Complainant, given that the disputed domain name consists of the Complainant’s distinctive brand plus a description of the Complainant’s product. See section 2.5.1 of WIPO Overview 3.0.
The Respondent adds that he uses the Complainant’s products when operating on his patients. This raises the question as to whether in fact the Respondent registered the disputed domain name to promote his own personal goods or services. While the Respondent points out that he is not doing so at present, he does not specifically deny that he intends to use the disputed domain name in this way in future. And if he were to do so, it is difficult to see how this could constitute anything other than bad faith use, given the composition of the disputed domain name and the fact that it implies an affiliation with the Complainant. In particular, it seems unlikely that the Respondent would meet the applicable principles regarding nominative fair use articulated in sections 2.4 and 2.5 of the WIPO Overview and notably the case of Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903.
In any event, in the absence of any clear explanation of his purpose, the Panel thinks it reasonable to infer that, on the balance of probabilities, the Respondent did intend to use the disputed domain name to unfairly target the Complainant’s mark in some way, whether to promote his own services or otherwise.
In summary, the Panel considers that the following cumulative circumstances are indicative of passive holding in bad faith: (i) the distinctiveness of the Complainant’s mark, (ii) the failure of the Respondent to provide any evidence of actual or contemplated good-faith use, and (iii) the lack of any clear explanation by the Respondent of his purpose in registering the disputed domain name together with the implausibility of any good faith use to which the disputed domain name may be put – or, at a minimum, of the bounds within which such use would conform so as to avoid abusing the Complainant’s mark.
For the above reasons, the Panel considers that the Complainant has established the third element of paragraph 4(a) of the Policy.
7. DecisionFor 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,
Adam Taylor
Sole Panelist
Date: October 14, 2021
1 The Panel has disregarded the Respondent’s assertions regarding United States trade mark law and cases as these are not relevant to the Panel’s decision and, in any case, there is no actual use of the disputed domain name.