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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEO Pharma Inc. v. Ching Ping Lam, Leo Pharma

Case No. D2020-1373

1. The Parties

The Complainant is LEO Pharma Inc., Denmark, represented by King & Spalding, United States of America (“United States” or “U.S.”).

The Respondent is Ching Ping Lam, Leo Pharma, Thailand.

2. The Domain Name and Registrar

The disputed domain name <leo-pharmaceuticals.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 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 June 4, 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 amended Complaint on June 4, 2020.

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 June 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on June 29, 2020.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 9, 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 an independent, research-based pharmaceutical company having its headquarters in Denmark, with a global team of 6,000 people serving 92 million patients in 130 countries.

The Complainant is the owner of numerous trade mark registrations for the LEO and LEO PHARMA marks in various jurisdictions, including, inter alia, the LEO trade mark in the United States (U.S. Trade mark Registration no. 4,327,125) registered on April 30, 2013, the LEO PHARMA trade mark in the United States (U.S. Trade mark Registration no. 4,308,015) registered on March 26, 2013, and several LEO trade marks in Thailand.

The Complainant also owns and operates the domain name <leo-pharma.com> which contains the words LEO PHARMA.

The Respondent registered the Disputed Domain Name on December 28, 2017.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark LEO, which has been wholly incorporated into the Disputed Domain Name, with the addition of the word “pharmaceuticals” which appears to be a generic term for products such as the ones sold by the Complainant;

(b) The Disputed Domain Name has never been used, and has not been put into use, by the Respondent for any bona fide offering of goods or services. The Respondent was not commonly known by the Disputed Domain Name and the Complainant has never authorised or given permission to the Respondent, who is not connected with the Complainant in any way, to use its LEO trade mark. The Respondent’s use of the Disputed Domain Name is commercial and neither legitimate nor fair. Therefore, the Respondent has no rights or legitimate interest in the Disputed Domain Name; and

(c) the only intention of the Respondent in registering the Disputed Domain Name is to confuse and deceive the public into believing that the Disputed Domain Name is associated with a legitimate business, selling legitimate products, when in fact it is not, so as to divert potential consumers to the Respondent’s website in an attempt to defraud members of the public and for the Respondent’s financial gain, which supports the fact that the Respondent is acting in bad faith.

B. Respondent

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

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the LEO and LEO PHARMA trade marks, based on its various trade mark registrations.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s LEO mark in its entirety with the addition of the word “pharmaceuticals”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

Given that pharmaceutical products are the key products for which the LEO trademark is used by the Complainant, the Panel agrees with the Complainant that the mere addition of the word “pharmaceuticals” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark.

The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s LEO trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainant has not authorised the Respondent to use the LEO or LEO PHARMA marks, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the LEO or LEO PHARMA mark. The Panel is of the view that a prima facie case has been made and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him 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 was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark 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 trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services, since the Disputed Domain Name resolves to a website which contains several broken links and promotes and possibly offers for sale steroid products which is illegal. Therefore, it cannot be said that such use by the Respondent constitutes a bona fide offering of goods or services.

There is also no evidence that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that she has become known by the Disputed Domain Name. Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.

By the same token, no evidence has been provided to suggest 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 LEO and LEO PHARMA marks.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. As such, the fact that the Disputed Domain Name incorporates the Complainant’s LEO mark in its entirety with the addition of a descriptive term which describes the key products for which the LEO trademark is used by the Complainant already creates a presumption of bad faith.

The website to which the Disputed Domain Name resolves appears to promote and possibly offer for sale steroid products which is illegal. UDRP panels have found that the use of a disputed domain name to maintain a website through which it sells illegal drugs constitutes evidence of bad faith (see Hardee’s Food Systems, Inc. v. Morgan Kelsey, WIPO Case No. D2011-1757; and California Milk Processor Board, an instrumentality of the State of California v. Whois Privacy Shield Services / Tiffany Petropolis, Domain Re seller Services, WIPO Case No. D2018-0934).

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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 <leo-pharmaceuticals.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: July 23, 2020

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