The Complainant is Galderma Holding S.A., Switzerland, represented by Demys Limited, United Kingdom.
The Respondent is Jacob Beer, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2021. On October 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 26, 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 October 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 29, 2021.
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”).
On November 18 and November 19, 2021, the Center received a communication from the Respondent’s presentative requesting automatic four-calendar day extension for response pursuant to paragraph 5(b) of the Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was extended to December 3, 2021. The Respondent did not submit any response. Accordingly, the Center started the Commencement of Panel Appointment Process on December 6, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 8, 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 Swiss pharmaceutical company specializing in dermatological treatments and skin care products. The Complainant was formed in 1981 as a joint venture between Nestlé and L’Oréal. The Complainant operates five manufacturing plants, in Germany, Canada, Sweden, Brazil and France. It sells its products in over 70 countries and employs more than 5,000 people. The Complainant operates a website at “www.galderma.com”.
The Complainant owns numerous trademark registrations that incorporate GALDERMA in numerous jurisdictions, such as European Union trademark no. 003833415, registered on September 12, 2005, and United States trademark No. 73705848, registered on March 28, 1989. All trademarks pre-date the registration of the Domain Name.
The Domain Name was registered on March 24, 2020. At the time of the Complaint, and the time of drafting the Decision, the Domain Name resolved to the Registrar’s parking page with pay-per-click (“PPC”) links to providers of pharmaceutical/cosmetic products and services.
5. Parties’ Contentions A. ComplainantThe Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is confusingly similar to its trademark. The addition of “clinical trials” does not distinguish the Domain Name from the Complainant’s name and trademarks. On the contrary, it increases the potential for confusion among Internet users, as clinical trials are part of the Complainant’s business.
The Respondent is not authorized to use the Complainant’s trademark and not a licensee of the Complainant. The Complainant asserts that the Respondent is not commonly known by the Domain Name prior to or after the registration of the Domain Name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name is connection with a bona fide offering of goods. The Complainant has found nothing to suggest that the Respondent owns any trademarks that incorporate or are similar or identical to the terms GALDERMA or GALDERMA CLINICAL TRIALS. The Complainant contends that given the fame of its name and trademarks and the confusing similarity of the Domain Name to said marks, there is no conceivable use to which the Domain Name could be put by the Respondent. The Respondent’s use of the Domain Name to pay-per-click advertising links capitalize on the value of the Complainant’s name and marks. The use suggest bad faith as it misdirect users to third party advertising to the detriment of the Complainant’s rights.
The Complainant argues that the Complainant’s name and trademarks are highly distinctive and well-known. It is inconceivable that the Respondent did not have the Complainant in mind when it registered the Domain Name. The Complainant contends the likelihood of confusion, evident commercial gain through advertising and lack of rights by the Respondent is such that bad faith may be inferred.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has established that it has rights in the trademark GALDERMA.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Complainant’s trademark is recognizable in the Domain Name. The addition of “clinical trials” does not distinguish the Domain Name from the Complainant’s trademark. Therefore, the inclusion of these terms does not prevent a finding of confusing similarity under the first element of the Policy, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsAs described in WIPO Overview 3.0 section 2.1, “while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name or otherwise make use of its trademark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights, and the Panel finds no indication that the Respondent has been commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name, as it has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods. The Domain Name resolves to a parked page comprising pay-per-click advertising links. This is not bona fide, but rather suggests bad faith as it misdirect users to third party advertising, see WIPO Overview 3.0 section 2.9.
The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithNoting the Complainant’s reputation, it is probable that the Respondent was aware of the trademark and the Complainant’s business prior to registering the Domain Name. Based on the case file, and taking into account that the Domain Name directs to a parking page with PPC links related to the Complainant’s business, the Panel agrees that it is implausible that the Respondent registered the Domain Name in good faith. The Panel notes that the Respondent has tried to create a false association between the Domain Name and the trademark GALDERMA. The Domain Name has been used to attract Internet users to a website for commercial gain by creating a likelihood of confusion with the Complainant’s mark, see WIPO Overview 3.0 section 3.1. The Respondent has not provided any evidence of actual or contemplated good faith use.
The actual use of the Domain Name is rather evidence of bad faith.
Finally, the Respondent’s use of a privacy service to conceal his identity may under the circumstances of this case further indicate bad faith.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name
Mathias Lilleengen
Sole Panelist
Date: December 21, 2021