The Complainant is Norgine Limited, United Kingdom, represented by Deloitte LLP, United Kingdom.
The Respondent is c/o whoisproxy.com, United States of America / Name Redacted.1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 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 September 3, 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 on September 8, 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 the Respondent of the Complaint, and the proceedings commenced on September 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on October 8, 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 BackgroundThe Complainant is a pharmaceutical company based in Europe and founded in 1906. It is part of the Norgine group of companies (together, “the Complainant Group”) which also includes: Norgine Ventures Management Limited, a United Kingdom company; Norgine B.V., Norgine Europe B.V., and Norgine Ventures B.V., all of which are based in the Netherlands; as well as Austrian, Belgian, German and other European entities. The Complainant, or the Complainant Group, owns an extensive international portfolio of trade mark registrations for its NORGINE mark including the United Kingdom registration no. 609225 registered on September 26, 1939 in the Complainant’s name. The Complainant, or the Complainant Group, also own a substantial portfolio of domain names that incorporate the NORGINE mark, including
The disputed domain name was registered on April 19, 2021 and does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant submits that the disputed domain name wholly incorporates the highly distinctive NORGINE mark as its dominant element which is sufficient to render the disputed domain name confusingly similar to the Complainant’s mark. It says that the addition of the common English word “ventures” in the disputed domain name does not prevent there being confusing similarity and because of the Complainant’s use in trade of “Norgine Ventures” for its financing and investment arm the disputed domain name would be entirely appropriate to designate the Complainant Group and its business of the same name.
The Complainant submits that the disputed domain name has not yet, to the Complainant Group’s knowledge, been used for any live website and there is no evidence that it has been used for any legitimate trade, business or other activity. The Complainant suspects and is concerned that the disputed domain name may have been registered in order to host email addresses and/or to be used in communications and literature to add credibility to the claims that the registrant is (or is somehow legitimately connected to) the Complainant’s “Norgine Ventures” business.
The Complainant submits further that it has undertaken reasonable online searches and investigations, to try to identify third party rights in and to the NORGINE mark, or a similar trade mark or sign, but found no relevant third party rights that could be reasonably attributed to the Respondent. The Complainant confirms on behalf of it and the Complainant Group that it has not licensed or otherwise given any third parties permission to use the NORGINE mark as part of the disputed domain name. To the best of the Complainant’s knowledge, it says that no third party has sought or attempted to seek authorization from the Complainant, or the Complainant Group, to use the NORGINE mark as part of the disputed domain name.
The Complainant also submits that the fact that the Respondent used a privacy service to conceal his/her identity as registrant of the disputed domain name and has not made any contact with the Complainant despite being notified (by the privacy service) of the Complainant’s concerns as a result of a cease and desist letter and follow-up letter sent by the Complainant’s legal representatives in July 2021, is also indicative of the Respondent having no rights or legitimate interests in the disputed domain name.
The Complainant notes that the disputed domain name was registered long after the Complainant Group first began using the NORGINE mark. It says that the Respondent could easily have found out about the Complainant’s NORGINE mark and business, including the ventures business and details of the Complainant Group’s CEO who is listed as a registrant of the disputed domain name, from the Complainant’s substantial online presence. It notes that in choosing the name of the Complainant Group’s CEO, as the given name for the WhoIs record for the disputed domain name, the Respondent has demonstrated its pre-existing knowledge of the Complainant Group.
The Complainant suggests that the most plausible explanation for creation of the disputed domain name was that the Respondent not only knew about the Complainant Group, but was actively seeking through use of the NORGINE mark and the disputed domain name to impersonate the Complainant Group and/or its ventures business. The Complainant notes that it has faced this issue before in circumstances that a domain name featuring the NORGINE mark was used for a fake website, and also (via an associated email address) to reach out to customers and/or potential customers of the Complainant Group as part of fraudulent phishing scams.
The Complainant fears that the disputed domain name might be being used to host email addresses. In particular, the Complainant’s internal IT security team has run checks using an online tool (MXtoolbox.com) to see if mail exchange records (known as “MX records”) have been created for the disputed domain name. It appears from those checks that MX records do exist for the disputed domain name, however, there is no evidence of use of any actual emails from or to an email address hosted at the disputed domain name.
The Complainant remains concerned that in the context of its industry, namely, pharmaceuticals and medical products and specifically that of the ventures business (financial investment), that emails from addresses associated with the disputed domain name could be used to solicit personal data and/or procure financial information or data from email recipients. In addition, the Complainant has noted its concern that the Respondent could refer to the disputed domain name in correspondence or be making other use of the disputed domain name so as to legitimise a false claim that it is (or is legitimately connected to) the Norgine Ventures business. Considering that the disputed domain name is not being used for a website and that there is no evidence available online of any third parties trading or using the NORGINE mark for their business, the Complainant submits that there can be only one reasonable conclusion, namely that the disputed domain name was registered to be used for phishing emails, or to compel the Complainant Group to purchase the disputed domain name in order to avoid that risk.
In circumstances that the disputed domain name reproduces the NORGINE mark in its entirety, in the absence of a reasonable explanation or evidence of genuine motive for a registration that is effectively a blocking registration in the “.co” domain space, and considering that the Respondent tried to hide its identity using a privacy service, the Complainant suggests that the circumstances are sufficient to infer opportunistic bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns United Kingdom trade mark registration No. 609225 for its NORGINE mark, which was registered on September 26, 1939.
The disputed domain name wholly incorporates the NORGINE mark which is sufficient to render it confusingly similar to the Complainant’s mark. The addition of the word “ventures” after the word “norgine” in the disputed domain name does not prevent a finding of confusing similarity.
As a result, the Complaint succeeds under the first element of the Policy.
Although the disputed domain name does not yet appear to have been used for any live website, according to the Complainant there is also no evidence that it has been used for any legitimate trade, business, or other activity.
The Complainant has further submitted that it has undertaken reasonable online searches and investigations, to try to identify third party rights in and to the NORGINE mark, or a similar trade mark or sign, but found no relevant third party rights that could be reasonably attributed to the Respondent. The Complainant has confirmed, on behalf of it and the Complainant Group, that it has not licensed or otherwise given any third parties permission to use the NORGINE mark as part of the disputed domain name. It has also submitted that, to the best of its knowledge, no third party has sought or attempted to seek authorisation from the Complainant, or the Complainant Group, to use the NORGINE mark as part of the disputed domain name.
The Complainant has submitted that the NORGINE mark is a highly distinctive coined term that it has used for decades in connection with its pharmaceutical business. In the absence of any response from the Respondent to its cease and desist letter and reminder sent in July 2021 or of any credible explanation or rationale for use of its NORGINE mark in the disputed domain name, it is concerned that the disputed domain name may have been registered opportunistically by the Respondent. This, says the Complainant, could be to host email addresses and/or to use in communications and literature to add credibility to the claims that the registrant is (or is somehow legitimately connected to) the Complainant’s “Norgine Ventures” business, or in the alternative to compel the Complainant Group to purchase the disputed domain name in order to avoid the risk of phishing.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. On this basis and for the reasons outlined in Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name was registered in April 2021, many decades after the registration by the Complainant of its NORGINE mark. The NORGINE mark is a highly distinctive, coined term that has been used extensively by the Complainant Group in Europe and is protected internationally, including in the United States of America. Based on the evidence submitted by the Complainant, the Complainant Group has a substantial Internet presence and it is apparent that the Respondent could easily have found out about the Complainant’s NORGINE mark and business, including the ventures business and details of the Complainant’s CEO, from the Complainant’s substantial online presence. The Panel agrees with the Complainant that in choosing the name of the Complainant Group’s CEO, as the given name for the WhoIs record for the disputed domain name, the Respondent has demonstrated its pre-existing knowledge of the Complainant and the Complainant Group and it is therefore most likely that it registered the disputed domain name with knowledge of the Complainant’s mark and business.
Based on the Complainant’s evidence, the disputed domain name does not resolve to an active web page and has never done so. The Respondent’s use of the disputed domain name has since inception been passive. Section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out the factors that have been considered relevant by previous UDRP panels in determining whether passive holding is in bad faith or not. These factors are (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
In the present case the Complainant’s NORGINE mark is a highly distinctive coined term that has been substantially used in Europe for more than a century and which is protected internationally with a very substantial web presence. The Respondent has failed to respond to the Complainant’s representatives’ cease and desist letters or to respond to the Complaint and there is no evidence of intended use of the disputed domain name in good faith. Thirdly, the Panel notes that the Respondent has used a privacy service to conceal its registration identity. Finally, the Panel finds that there is no likely plausible reason for the Respondent to have registered or sought to use the disputed domain name containing the name “Norgine Ventures”, which is identical to the trading name used by the Complainant Group for its financing business in the healthcare and life sciences sector.
It seems to the Panel that it is most likely, as suggested by the Complainant, that the Respondent sought to send emails from addresses associated with the disputed domain name which could be used to solicit personal data and/or procure financial information or data from recipients, or that the Respondent wished to refer to the disputed domain name in correspondence or to make use of it in order to falsely suggest that it was connected to “Norgine Ventures”. Alternatively, the Respondent may have registered it for the purpose of selling the disputed domain name at a profit to the Complainant.
The Respondent’s conduct in fraudulently using the name of the Complainant’s CEO as the registrant and in concocting what appears to be a false residential address for him, together with the fact that it used a privacy service to conceal its identity and failed to respond to the Complainant’s representatives’ cease and desist letters to explain itself, only reinforces the Panel’s view that the Respondent’s passive holding of the disputed domain name is in bad faith.
Accordingly, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint succeeds under this element 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 name
Alistair Payne
Sole Panelist
Date: October 19, 2021
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.