WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virbac v. ML Kumavat, Pai Malikbhai Kumavat

Case No. D2014-2085

1. The Parties

The Complainant is Virbac of Carros, France, represented by WITETIC, France.

The Respondent is ML Kumavat, Pai Malikbhai Kumavat of Montreal, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <virbacpharm.com> is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2014, 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 2, 2014 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 December 3, 2014. Also on December 2, 2014, the Center also transmitted the language of the proceedings document to the parties in both English and Russian. On December 5, 2014, the Complainant requested the language of the proceedings to be English. On the same date, the Center invited the Respondent to comment on this request of the Complainant by December 7, 2014. Despite having been invited to do so by the Center, the Respondent did not submit any comment in relation to the language of the proceedings.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2014.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 21, 2015. 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.

Under Paragraph 11(a) of the Rules, 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 language of the Registration Agreement for the disputed domain name is Russian.

The Complaint was filed in English and the Complainant has requested the language of the proceeding to be English and has pointed out that the Respondent understands and can communicate in English. In support of its request, the Complainant has submitted email correspondence originating from the Respondent in English, has noted that the website at the disputed domain name is in English and provides contact details of the Respondent in South Africa, where English is an official language, and has pointed out that the Respondent’s address, as provided by the Registrar, is in Canada, where English is also an official language. The Complainant is a French company.

The Respondent has not rejected the Complainant’s request that English be the language of the proceedings and has not disputed the Complainant’s arguments in this respect, although the Center invited it to do so.

Taking all the above into account, the Panel finds that the use of the English language would be convenient to both Parties, without putting any of them into disadvantage. Therefore, and in exercise of its powers under Paragraphs 10(a)(b) and (c) and 11(a) of the Rules, the Panel decides that the language of this proceeding shall be English.

4. Factual Background

The Complainant is an animal health company that is active worldwide. It supplies a large range of veterinary and pharmaceutical goods and services rendered to veterinarians, farmers and animal owners. The Complainant’s products are available in more than 100 countries in the world, including India and South Africa.

The Complainant is the owner of the following trademark registrations for VIRBAC (the “VIRBAC trademarks”):

- the word trademark VIRBAC, an International trademark with registration No. 420,254, registered on December 15, 1975, for goods in International Class 5;

- the combined trademark VIRBAC, registered in France with registration No. 3,121,529, registered on September 19, 2001 for goods and services in International Classes 5, 38, 42 and 44; and

- the combined trademark VIRBAC, an International trademark with registration No. 793,769, registered on March 11, 2002 for goods and services in International Classes 5, 38, 42 and 44.

The Complainant is the owner of the domain names <virbac.com>, <virbac.fr> and <virbac.co.za>.

The disputed domain name was registered on November 14, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name includes the term “virbac” that corresponds to the Complainant’s trademark together with the non-distinctive and generic term “pharm”, which reinforces the association with the Complainant and increases the risk of confusion.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. It has no prior rights in a trademark or a trade name, and is not an authorized reseller of the Complainant. Considering the reputation of the Complainant, the Respondent must have been aware of the existence of the Complainant and of its VIRBAC trademark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent has registered it primarily for the purpose of disrupting the business of the Complainant, and by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, 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 of the products offered by the Respondent. The Respondent has copied and reproduced the entire website of the Complainant’s subsidiary in South Africa which is available at “www.virbac.co.za”. Thus, the Respondent attempts to confuse consumers and to drag traffic away from the Complainant. The Respondent is using the disputed domain name for contacting suppliers of raw materials and chemicals and subsidiaries of the Complainant and presenting itself as a purchasing agent for the Complainant. Thus, by impersonating the Complainant, it attempts to mislead the latter’s business partners and collect business information from them.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present his case.

By the Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under the Rules, paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “[h]ere, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “[s]Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence for and has thus established its trademark rights in the VIRBAC trademark.

The Panel notes that there is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domains (“gTLD”) such as “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name that has to be analyzed is its “virbacpharm” section, which is a combination of the elements “virbac” and “pharm”. The first of these elements is identical to the Complainant’s VIRBAC trademark. The second element is descriptive of the business of the Complainant and does not render the disputed domain name dissimilar to the VIRBAC trademark. In view of this, it appears more likely than not that Internet users would regard the disputed domain name as related to the Complainant and to its pharmaceutical business.

For these reasons, the Panel finds that the disputed domain name is confusingly similar to the VIRBAC trademark in which the Complainant has rights, and the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has no prior rights in a trademark or a trade name, and is not an authorized reseller of the Complainant. The Complainant also submits that the website at the disputed domain name is a copy of the website of the Complainant’s subsidiary in South Africa, and that the Respondent is contacting the Complainant’s suppliers of raw materials and chemicals and is fraudulently presenting itself as a purchasing agent for the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may infer from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in the Policy, paragraph 4(c), are present in its favor.

In this situation, the only information available about the Respondent is the contentions of the Complainant and the evidence submitted with the Complaint, the WhoIs information for the disputed domain name, provided by the Registrar and the content of the website at the disputed domain name.

The WhoIs information for the disputed domain name contains no evidence that the Respondent is known by the disputed domain name. The disputed domain name is confusingly similar to the VIRBAC trademark of the Complainant, which was registered and used long before the registration of the disputed domain name. The disputed domain name includes the term “pharm”, which is a common abbreviation for “pharmaceutical” and describes the business of the Complainant. As contended by the Complainant and undisputed by the Respondent, the Respondent uses the disputed domain name for a website, which reproduces the website of the Complainant’s subsidiary in South Africa. In this situation, it is more likely than not that Internet users may be led to wrongly believe that this website is related to or endorsed by the Complainant. The evidence submitted by the Complainant shows that the Respondent presents itself as an agent of the Complainant and attempts to enter into commercial deals with partners and suppliers of the Complainant.

In the Panel’s view, these circumstances show that the Respondent was well aware of the Complainant and of its VIRBAC trademark when the disputed domain name was registered. The registration and use of the disputed domain name took place without the consent of the Complainant. The Panel finds it more likely than not that this registration was made in an attempt to benefit from the reputation of the VIRBAC trademark to attract customers to the Respondent’s website and to offer them business deals in competition with the Complainant. The Panel is of the opinion that such conduct cannot give rise to rights or legitimate interests in the disputed domain name, and finds that the Complainant’s prima facie case has not been rebutted. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The Complainant has provided sufficient evidence to establish the reputation of its VIRBAC trademark, which is not denied by the Respondent.

The Complainant is carrying out its business internationally. The disputed domain name is confusingly similar to the VIRBAC trademark and was registered without the consent of the Complainant, and the Respondent has failed to show any rights or legitimate interests to register it. The website at the disputed domain name is a copy of the website of the Complainant’s subsidiary in South Africa. In these circumstances, the Panel is satisfied that the Respondent was well aware of the Complainant, and that the disputed domain name was registered in view of the popularity of the Complainant’s trademark and the goodwill attached to it. Therefore, the Panel accepts that the disputed domain name was registered in bad faith.

The Respondent has attempted to mislead third parties that it is an agent of the Complainant and has made commercial offers to them. In the Panel’s view, this conduct, combined with the copying of the website of the Complainant’s South African subsidiary, was not made in good faith. Rather, it appears that the Respondent, by using the disputed domain name, is pirating the Complainant’s goodwill and consumer recognition in an attempt to extract financial gain by misleading consumers and business partners of the Complainant.

Therefore, and in the lack of any allegation or evidence to the contrary, the Panel finds 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 <virbacpharm.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: February 15, 2015