The Complainant is Ferring B.V., of Netherlands, represented by Jacobacci Avocats, France.
The Respondent is Zhu Xumei, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2021. On January 18, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the Domain Name. On January 19, 2021, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 16, 2021. The Center appointed Nicholas Smith as panelists in this matter on February 23, 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 Background The Complainant is company located in the Netherlands, part of the broader Ferring Group, which is a biopharmaceutical group that specialises in areas such as reproductive medicine and women’s health. The Ferring Group markets its products in over 110 countries, including the United Arab Emirates, and had a global turnover of EUR 1.9 billion in 2019. The Complainant has held trade mark registrations for FERRING (the “FERRING Mark”) since at least 1994, including an International trade mark registration (No. 615597) registered on February 18, 1994 and designating various countries in the European Union. The Complainant holds multiple trade mark registrations in the United Arab Emirates consisting or containing the FERRING Mark, which date back to 2011. The Domain Name The Complainant makes the following contentions: (i) the Domain Name is identical or confusingly similar to the Complainant’s FERRING Mark; (ii) the Respondent has no rights or any legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. The Complainant is the owner of the FERRING Mark, having registered and used the FERRING Mark in the European Union and other jurisdictions, including the United Arab Emirates. The Domain Name fully incorporates the FERRING Mark and is identical to the FERRING Mark. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is simply offering the Domain Name for sale without any other use. Such use of the Domain Name cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the Domain Name and therefore the Respondent has no rights or legitimate interests in the Domain Name under paragraph 6(a)(ii) of the Policy. The Domain Name has been registered and is being used in bad faith. The only possible motive held by the Respondent in registering the Domain Name is for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of that the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name. In the present case, the website to which the Domain Name resolves to indicates that the Domain Name is for sale and the Respondent has also directly contacted the Complainant offering to sell it the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the FERRING Mark, having registrations for FERRING as a trade mark throughout the world including in the United Arab Emirates, where the Domain Name is registered. The Domain Name is identical to the FERRING Mark. It is well established that the country code Top-Level Domain (“ccTLD”) (such as “.ae”) is not an element taken into consideration when evaluating whether the Domain Name is identical to a complainant’s trade mark, see eBay Inc. v Akram Mehmood,WIPO Case No. DAE2007-0001; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. 1 B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 6(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the Domain Name for purposes of paragraph 6(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the FERRING Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Name for a page advertising itself as being for sale, does not, in the absence of other evidence, amount to use for a bona fide offering of goods and services. The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 6(a)(ii) of the Policy. C. Registered or is Being Used in Bad Faith For the purposes of paragraph 6(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith: (i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 web site or location. (Policy, paragraph 6(b)) Within 1 month of the registration of the Domain Name, the Respondent sent an email to the Complainant offering to sell it the Domain Name. At the same time, the Domain Name was listed for sale on the website “www.sedo.com” for the price well in excess of any out-of-pocket costs likely incurred by the Respondent. In the absence of any evidence supporting any other explanation as to the possible use of the Domain Name, the Panel is satisfied that that the Respondent registered the Domain Name both in awareness of the Complainant and for the purpose of selling it to the Complainant or a third party for valuable consideration in excess of its documented out-of-pocket costs directly related to it. This amounts to registration and use of the Domain Name in bad faith pursuant to paragraph 6(b)(i) of the Policy. The Panel, while noting that the .AE Policy only requires that a complainant shows that a respondent registered or used the domain name at issue in bad faith, finds that the Respondent has registered and has been using the Domain Name in bad faith under paragraph 6(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Nicholas Smith 1 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases, where appropriate.
Sole Panelist
March 3, 2021
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