Complainant is DNA Script, France, represented by Tmark Conseils, France.
Respondent is qin xian sheng, Singapore.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 30, 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2022.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on February 16, 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 BackgroundComplainant is a French corporation that was founded in 2014 and registered in the French commercial register of Créteil on August 28, 2019. Complainant is located in Le Kremlin-Bicêtre, France. Complainant operates in the field of enzymatic oligonucleotide synthesis on demand, especially in Enzymatic DNA Synthesis (EDS) on demand and in oligonucleotide printing on demand.
Complainant owns trademark registrations for the DNA SCRIPT mark in France and in other jurisdictions. Sample trademark registrations for DNA SCRIPT by Complainant include:
- DNA SCRIPT, French Trademark Reg. No. 4362312, registered on May 18, 2017;
- DNA SCRIPT, French Trademark Reg. No. 4646432, registered on May 11, 2020; and
- DNA SCRIPT, European Union Trade Mark No. 1566534, registered on October 27, 2020.
Complainant has also submitted a trademark application for DNA SCRIPT in the United States of America (“United States”):
- DNA SCRIPT, United States Ser. No. 79300545, submitted on October 27, 2020.
The disputed domain name was registered on July 8, 2021. At the time of filing the Complaint, the disputed domain name resolved to a pornographic website. Currently, the disputed domain name does not resolve to an active or accessible website.
5. Parties’ Contentions A. ComplainantAccording to Complainant, the disputed domain name is confusingly similar to Complainant’s DNA SCRIPT trademark in which Complainant has rights as demonstrated through its cited registrations. The DNA SCRIPT mark was adopted and has been continuously used in the United States and France since at least as early as 2014 in connection with numerous biotech products and services. Today, the DNA SCRIPT mark is largely recognizable due to the international nature of Complainant’s business. Complainant maintains its online presence through its main website, “www.dnascript.com”, which it created in 2013. Complainant has also owned the domain name
Complainant asserts that the disputed domain name
Complainant argues that Respondent lacks any rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent does not have any trademark rights to the terms “dna script” or any other terms used in the disputed domain name. Complainant also indicates there is no evidence that Respondent retains unregistered trademark rights to the term “dna script” or any other terms used in the disputed domain name, and that Respondent has not received any license from Complainant to use domain names featuring the DNA SCRIPT trademark. Complainant states that Respondent is not currently offering any goods or services from the disputed domain name, and that the disputed domain name resolved to a pornographic website.
Complainant argues that Respondent both registered and is using the disputed domain name in bad faith. Complainant states that its earliest trademark registration and website creation predate the creation date of the disputed domain name, and that substantial goodwill and recognition has accrued since Complainant’s establishment in 2014. Complainant asserts that the “DNA Script” name has become well known for its industry leadership. Complainant further asserts the lack of any rights or legitimate interests in the disputed domain name leads Complainant to conclude that the registration must have been made for the purpose of diverting Internet traffic from Complainant’s website to that of Respondent, thus disrupting the business of Complainant. Complainant also argues that Respondent deliberately approximated Complainant’s domain names and DNA SCRIPT mark, further demonstrating its lack of good faith at the time of registration of the disputed domain name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraphs 5(f) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the panel shall proceed to a decision on the basis of the complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarA national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns multiple trademark registrations, including in France, for the DNA SCRIPT trademark as referenced above. Therefore, Complainant has established that it has rights in the DNA SCRIPT mark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the entirety of the DNA SCRIPT mark, merely adding a dash between the two words comprising the mark. The addition of a dash does not prevent the DNA SCRIPT mark from being recognizable in the disputed domain name.
Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its DNA SCRIPT mark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to come forward with any evidence showing rights or legitimate interests. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not an assignee or licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain name and that there is no evidence that Respondent has established trademark rights in the disputed domain name. Again, Respondent has not provided any evidence or arguments to demonstrate that it has such rights.
Additionally, the non-use of a domain name has been considered by panels not to be a bona fide offering of goods or services. Previous panels have found that there was no bona fide offering of goods or services in an inactive website. The disputed domain had previously resolved to a pornographic website, but currently does not resolve to an active, accessible website. The disputed domain name does not associate any content whatsoever, nor does it demonstrate a use evincing rights or legitimate interests. The disputed domain name invites an association with Complainant by approximating its DNA SCRIPT trademark by entirely including the terms of the mark and inevitably diverting Internet traffic and disrupting Complainant’s business. WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithBad faith is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s 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.
Here, Respondent’s actions align with 4(b)(iv) of the Policy. The disputed domain name contains the entirety of the DNA SCRIPT mark, with the addition of a dash between them. Due to the global nature of the “DNA Script” brand, evidenced by several trademark registrations as well as industry leadership in the biotech field, Respondent likely was aware of Complainant and the DNA SCRIPT mark when it registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
This Panel therefore finds that Respondent acted in bad faith by its registration and use of the disputed domain name, intentionally creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website with the purpose of attracting Internet users for commercial gain as per paragraph 4(b)(iv) of the Policy. The fact that the disputed domain name currently does not resolve to an active or accessible website does not prevent a finding of bad faith.
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
Brian J. Winterfeldt
Sole Panelist
Date: February 25, 2022