The Complainant is Coloplast A/S, Denmark, internally represented.
The Respondent is Esther Tam, United States of America (“United States”). 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 15, 2020, 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 May 22, 2020, 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 May 25, 2020. 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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2020. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 25, 2020. 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 a company that develops, manufactures, and markets medical devices and services. The Complainant is the owner of the COLOPLAST trademark in various jurisdictions, among others: International Registration for the trademark COLOPLAST, Registration No. 883011, registered on May 26, 2005. In addition, the Complainant is the owner of domain names with the term COLOPLAST, among others: - - - - The Respondent registered the Disputed Domain Name on May 6, 2020. The Disputed Domain Name The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant states that their COLOPLAST trademark and company name is fully contained within the Disputed Domain Name. Rights or legitimate interests The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Registration and use in bad faith The Complainant contends that the Respondent did not reply to a cease and desist letter and that the Respondent has created an MX record for the Disputed Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark COLOPLAST. The Disputed Domain Name reproduces the entirety of the Complainant’s COLOPLAST trademark with addition of the dictionary term “jobs”. Neither the Top-Level Domain “.co”, nor the dictionary term “jobs”, is of any significance to the present assessment of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to the Respondent of the dispute, the 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) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or (iii) 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 trademark or service mark at issue. There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the COLOPLAST trademark in the Disputed Domain Name. The Disputed Domain Name does not resolve to an active website, and there is no evidence in the record of a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent has failed to show that it has any rights or legitimate interests with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but instead did not reply. As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith. The Disputed Domain Name was registered in the year 2020 several years after the Complainant registered its COLOPLAST trademark. In addition, the Panel takes into account that the Complainant’s trademark is a coined term. The information provided by the Complainant shows that the COLOPLAST trademark has significance only as the Complainant’s trademark. In addition, the Complainant alleges that the COLOPLAST trademark has been used in many countries for over sixty (60) years. Therefore, the circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s COLOPLAST trademark when registering the Disputed Domain Name and it has created a likelihood of confusion with the Complainant’s trademarks in order to attract Internet users for his own commercial gain. The passive holding of the Disputed Domain Name, registered in such circumstances, is also use in bad faith under the Policy (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith. 7. Decision For 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 Pablo A. Palazzi
Disputed Domain Name at issue in this case:
Policy. C. Registered and Used in Bad Faith
Sole Panelist
Date: July 9, 2020
Full & Egal Universal Law Academy