The Complainant is Laboratoires Thea, France, represented by AARPI Scan Avocats, France.
The Respondent is Jun Tsuchikura, Japan1 .
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 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 December 28, 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 amended Complaint in English on December 29, 2021.
On December 28, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 29, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 the Respondent in English and Japanese of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2022.
The Center appointed Erica Aoki as the sole panelist in this matter on February 1, 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 a French company with a share capital of EUR 1,007,392.00 and is widely known under the names “Thea” and “Laboratories Thea” as a European leading company in the field of ophthalmology. Thea is 100% dedicated to eye care, offering a complete portfolio of products, both preventive and curative, in the areas of diagnosis, surgery and therapeutics, ranging from well-known classics to innovative products. The Complainant benefits from a strong international presence since Thea’s products are available in more than 70 countries worldwide.
The Complainant owns several trademarks that have been continuously used in commerce since their first registration on January 21, 1994 (French trademark registration no. 94502704 for THEA), and numerous domain names, exclusively composed of the word “thea”, among which
The disputed domain name was registered on December 12, 2021. The disputed domain name redirects to a website offering pornographic content.
5. Parties’ Contentions A. ComplainantThe Complainant owns numerous trademarks and domain names using the term “Thea” and “Laboratories Thea”.
The disputed domain name redirects to a website containing pornographic content which has no relation with the Complainant’s field of business.
The Complainant contends that the disputed domain name is identical to its THEA trademarks and domain names and confusingly similar to its LABORATOIRES THEA trademarks and company name since it reproduces the term “Thea” which is the sole part of the disputed domain name. Also, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Respondent has clearly attempted to divert Internet users' traffic to its own profit for commercial purposes, which also tarnishes the Complainant's reputation.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant is required to establish the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Language of the ProceedingThe language of the Registration Agreement for the disputed domain name is Japanese. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. General Energy a/k/a Edison GE GEEEEGE.COM a/k/a Edison-GE and Edison Electric Corp.,WIPO Case No. D2006-0334).
In deciding whether to allow the proceeding to be conducted in a language other than the language of the Registration Agreement, and to require the complainant in an appropriate case to translate the complaint into the language of that agreement, the panel must have regard to all “the relevant circumstances” of the case. The factors that the panel should take into consideration include inter alia whether the respondent is able to understand and effectively communicate in the language in which the complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without causing injustice to the parties.
According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), prior UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.
The Complainant has submitted a request that the language of the proceeding be English. The Complainant contends that it is located in France and has no knowledge of Japanese. The Complainant would have to retain specialized translation services in order to proceed in Japanese, which would impose an extra burden on the Complainant and unnecessarily delay the proceeding.
The Panel notes that the Center notified the Respondent in Japanese and English regarding the language of the proceeding and the Respondent was invited to present its objection to the proceeding being held in English and if the Center did not hear from the Respondent by the specified due date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceeding. The Respondent had the opportunity to raise objections or make known its preference but did not do so. The Panel further notes that the Center notified the Respondent in Japanese and English regarding the commencement of the proceeding, and the Respondent was informed that it could file a Response either in Japanese or English, but the Respondent did not send any response.
In addition, the disputed domain name is in Latin characters. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.
B. Identical or Confusingly SimilarBased on the facts presented by the Complainant, this Panel finds that the disputed domain name is identical to a mark in which the Complainant has rights under Policy, paragraph 4(a)(i). The Complainant has established its rights in THEA through registration and use. The Panel finds that there is no doubt that the disputed domain name is identical to the Complainant’s registered trademark, as the disputed domain name includes the Complainant’s mark in full, with only the addition of the generic Top-Level Domain “.tokyo” to the THEA mark, which does not prevent a finding of confusing similarity (see section 1.11 of the WIPO Overview 3.0).
C. Rights or Legitimate InterestsThe Panel finds the following on record in this proceeding under the Policy:
The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy indicates that a registrant may have a right or legitimate interest in a domain name if it uses the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. In this regard, the Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks. The disputed domain name redirects to a pornographic page.
There is no evidence on record that the Respondent is or was commonly known by the disputed domain name as an individual, business, or other organization.
There is no evidence on record that the 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 Complainant’s trademark.
Thus, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, under Policy paragraph 4(a)(ii).
D. Registered and Used in Bad FaithThe Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy and that the Respondent has used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s 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 site or of a product or service offered on the Respondent’s site.
The Complainant’s THEA trademark was registered long before the registration of the disputed domain name. The Complainant has extensively promoted its products under THEA trademark. Also, considering the fame of the Complainant’s THEA trademark, the Panel finds that it is most likely that the Respondent was aware of the Complainant’s rights to THEA trademark at the time the disputed domain name was registered, indicating that such registration was made in bad faith.
The disputed domain name redirects to the website containing pornographic content which has no relation with the Complainant’s field of business. Based on that evidence, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an 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 other online location, and this constitutes evidence of bad faith under Policy, paragraph 4(b)(iv).
Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under Policy, paragraph 4(a)(iii).
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
Erica Aoki
Sole Panelist
Date: February 16, 2022
The disputed domain name was originally registered through a privacy service.