The Complainant is Tosara Pharma Limited, Ireland, represented by SILKA AB, Sweden.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / zuhal topuz, Turkey.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 8, 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 December 13, 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 December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2022.
The Center appointed Federica Togo as the sole panelist in this matter on February 17, 2022. 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 the registered owner of trademarks in several jurisdictions consisting of, or containing the term, “sudocrem”, e.g., International Trademark registration No. 886513 SUDOCREM (word) registered on May 19, 2006, for “Non-medicated preparations for the skin; non-medicated toilet preparations; not including anti-perspirant preparations” in class 3 and for “Pharmaceutical and veterinary preparations and substances; medicinal cream for human and veterinary use; medicated skin care products” in class 5 and designating several countries, amongst others Turkey. In addition, the Complainant is the registered owner of Irish Trademark registration No. 264709 SUDOCREM NATURCARE (word), registered on March 9, 2021, for goods in classes 3 and 5 and Irish Trademark registration No. 264708 SUDOCREM NATURKIND (word), registered on March 9, 2021, for goods in classes 3 and 5.
It results from the information disclosed by the Registrar that the disputed domain names were registered on September 14, 2021.
Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain names resolved to a parking page and are offered for sale (i.e. USD 1,288 for each disputed domain name). No content is currently displayed on the websites to which the disputed domain names resolve.
5. Parties’ Contentions A. ComplainantIt results from the Complainant’s undisputed allegations that it is an Irish Pharmaceutical company founded in 1954, specialized in developing and marketing both branded ethical products and non-prescription pharmaceutical products sold over-the-counter, such as topical creams, antiseptic creams, cough drops, pain medicine, antibiotics, psoriasis medicines, infection medication, and other pharmaceuticals. Among the great variety of pharmaceutical products sold by the Complainant, it stands out an over-the-counter medicated cream for soothing sore skin, treating nappy rash, eczema and acne, marketed under the name “Sudocrem”. Invented by the Dublin-based pharmacist Thomas Smith in 1931, Sudocrem is now a product available in more than 40 countries.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s registered trademarks SUDOCREM, SUDOCREM NATURCARE, and SUDOCREM NATURKIND since they exactly reproduce the Complainant’s SUDOCREM, SUDOCREM NATURCARE, and SUDOCREM NATURKIND marks, with the sole addition of the generic Top-Level domain (“gTLD”) “.com”, which is inconsequential to determine similarities between the Complainant’s marks and the disputed domain names.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent is not a licensee of the Complainant, and it has not received any consent, permission or acquiescence from the Complainant to use its SUDOCREM, SUDOCREM NATURCARE, and SUDOCREM NATURKIND marks in association with the registration of the disputed domain names. It has found no evidence that the Respondent is commonly known by the disputed domain names. In addition, the disputed domain names resolve to Sedo parking sites where they are offered for sale for USD 1,288, a sum which is clearly in excess of their costs of registration. This use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. In fact, in view of the Complainant it is impossible to believe that the Respondent would have chosen the disputed domain names if it did not have the Complainant’s marks and activities in mind, considering that the disputed domain names comprise the Complainant’s marks in full, and that Internet users commonly associate the terms “sudocremnaturcare” and “sudocremnaturkind” with the Complainant and its activities. According to the Complainant, bearing in mind the distinctiveness of the Complainant’s trademarks (with no meaning in English language), their reproduction in full in the disputed domain names, and the fact that the Respondent is offering the disputed domain names for sale at USD 1,288, it is overwhelmingly likely that the Respondent registered the disputed domain names with a view to selling them to the Complainant, or to a Complainant’s competitor, for valuable consideration in excess of out of pocket expenses.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 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 SimilarPursuant 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 names are 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 trademark registrations for the marks SUDOCREM, SUDEOCRAM NATURCARE, and SUDOCREM NATURKIND, e.g., Section 4 above.
UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g. Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-1030; Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / William Douglas, WIPO Case No. D2021-0774; Compagnie Générale des Etablissements Michelin v. Milen Radumilo,WIPO Case No. DCO2020-0090). This Panel shares this view and notes that the Complainant’s registered trademark SUDOCREM is fully included in both disputed domain names, followed by the term “naturkind” in the disputed domain name
Moreover, the Panel finds that the disputed domain names are identical to the Complainant’s SUDOCREM NATURKIND and SUDOCREM NATURCARE trademarks.
Finally, the gTLD “.com” of the disputed domain names may be disregarded under the first element confusing similarity test (see WIPO Overview 3.0 at section 1.11.1).
In the light of the above, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant 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 names.
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 trademarks, e.g., by registering the disputed domain names comprising the trademarks entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain names in the sense of paragraph 4(c)(ii) of the Policy.
In addition, no content is currently displayed on the websites to which the disputed domain names resolve. Such use can neither be considered as a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraphs 4(c)(i) and (iii) of the Policy (see, e.g., Banca Monte dei Paschi di Siena S.p.A. v. Privacy service provided by Withheld for Privacy ehf / Julius Boyler,WIPO Case No. D2021-2296; Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello,WIPO Case No. D2020-1955). Moreover, the Panel notes that the disputed domain names are clearly constituted by the Complainant’s registered trademarks, carrying a high risk of implied affiliation, tending to suggest sponsorship or endorsement by the Complainant, contrary to the fact. The Panel finds it most likely that the Respondent selected the disputed domain names with the intent to attract Internet users for commercial gain, which is reinforced given the undisputed evidence that the deposited domain names were both parked for sale.
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 names.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording 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 these circumstances is that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).
It is the view of this Panel that the Respondent has actually registered the disputed domain names primarily for the purpose of selling them either to the Complainant or to third persons, in particular to one of the Complainant’s competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names. According to the Complainant’s uncontested allegations, the Respondent has offered the disputed domain names for sale on the domain marketplace Sedo (i.e. USD 1,288 for each disputed domain name). This Panel finds that this sum is in excess of any out-of-pocket costs directly related to the disputed domain names (see e.g. Expanscience v. Sarah Hampton,WIPO Case No. DCO2020-0064; T. Rowe Price Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1955; Linatex Limited v. Yunkook Jung,WIPO Case No. D2019-1784).
In addition, this finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following:
(i) the Respondent’s failure to submit a response;
(ii) its failure to provide any evidence of actual or contemplated good-faith use;
(iii) the implausibility of any good faith use to which the disputed domain names may be put;
(iv) the Respondent’s use of a privacy service to mask it details.
In the light of the above the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to 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 disputed domain names,
Federica Togo
Sole Panelist
Date: March 2, 2022