World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferring B.V. v. Simon David

Case No. DME2012-0007

1. The Parties

The Complainant is Ferring B.Y. of Hoofddorp, Netherlands represented by Olson & Cepuritis, Ltd., United States of America.

The Respondent is Simon David of Olympia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ferring.me> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2012. On October 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 12, 2012, the Center requested the Complainant to provide a Complaint in accordance with the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) on April 30, 2008 (the “Policy”). The Complainant filed an amended Complaint on October 12, 2012.

The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy for .ME, approved by doMEn on October 1, 2012 (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 October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2012.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 27, 2012. 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 the holder of the following trademark registrations (“FERRING Trademark”):

TRADEMARK

REG. NO

SPECIFICATION OF GOOD /SERVICES

CLASS

DATE OF REGISTRATION

OWNER

COUNTRY

FERRING

2731962

Prerecorded audio and video cassettes and DVD discs featuring topics relating to health, medical and pharmaceutical education

9

July 1, 2003

Ferring B.V.

USA

   

Printed matter, namely, brochures, leaflets, manuals, handbooks and newsletters in the field of pharmaceuticals, pharmaceutical research, and healthcare

16

July 1, 2003

Ferring B.V.

USA

FERRING

2739883

Pharmaceuticals for treatment in the fields of fertility, hematology, urology, gynecology, obstetrics, gastroenterology, endocrinology, oncology, renalology, immunology, pain relief, inflammatory diseases and vaccines

5

July 22, 2003

Ferring B.V.

USA

   

Educational services, namely, conducting symposiums, seminars, conferences, and lectures featuring topics relating to health, medical, and pharmaceutical education

41

July 22, 2003

Ferring B.V.

USA

FERRING

3662266

House mark for pharmaceuticals and pharmaceutical preparations used to treat diseases and conditions in the areas of endocrinology, urology, infertility, and chronic bowel disease, for treatment of diabetes insipidus, enuresis, bed wetting, and arthritis, and for use as a diagnostic agent and therapeutic agent for hormonal disorders

 

August 4, 2009

Ferring B.V.

USA

FERRING

3232088

House mark for a full line of pharmaceuticals and pharmaceutical preparations for treatment of urological disorders and conditions, diabetes insipidus, enuresis, bed wetting, arthritis, for treatment in the field of infertility, and for use as a diagnostic agent and therapeutic agent for hormonal disorders

5

April 24, 2007

Ferring B.V.

USA

   

Prerecorded audio and video cassettes and DVD discs featuring topics relating to health, medical and pharmaceutical education

9

April 24, 2007

Ferring B.V.

USA

   

Printed matter, namely brochures, leaflets, manuals, handbooks and newsletters in the field of pharmaceuticals, pharmaceutical research, and healthcare

16

April 24, 2007

Ferring B.V.

USA

   

Educational services, namely, conducting symposiums, seminars, conferences, and lectures featuring topics relating to health, medical, and pharmaceutical education

41

April 24, 2007

Ferring B.V.

USA

FERRING

128936

Pharmaceutical products and substances

 

January 1, 2011,

Ferring B.V.

United Arab Emirates

FERRING

1.650.195 renewed 2,251.772

(pharmaceutical products and services provided by the laboratory relating to medicine)

 

November 13, 1997

Ferring B.V.

Argentina

FERRING

153054

(organization of conventions and seminars, courses and training; providing advice and information, especially medical and pharmaceutical);

 

May 8, 1987

Ferring B.V.

Benelux

FERRING

430327

(pharmaceutical preparations and substances; and surgical, medical, dental, and veterinary apparatuses and instruments);

 

April 24, 1987

Ferring B.V.

Benelux

FERRING

92997-C

(pharmaceutical products in general and pharmaceutical preparations which stimulate the

fertility in men and women)

 

February 17, 2004

Ferring B.V.

Bolivia

FERRING

817376003

(medications in general)

 

February 6, 1996

Ferring B.V.

Brazil

FERRING

819272248

(drugs that act on the urinary tract) and other goods;

 

November 16, 2005

Ferring B.V.

Brazil

FERRING

821076639

(medical apparatuses and instruments) and other goods

 

December 23, 2003

Ferring B.V.

Brazil

FERRING

821694812

(pharmaceutical substances and products) and other goods

 

June 21, 2005

Ferring B.V.

Brazil

FERRING

782.005

(commericial establishment for the sale and purchase of pharmaceutical products or medications) and other goods

 

September 20, 1995

Ferring B.V.

Chile

FERRING

863.664

commericial establishment for the sale and purchase of pharmaceutical and veterinary products) and other goods

 

October 20, 2009

Ferring B.V.

Chile

FERRING

797.849

(establishment of industrial production of pharmaceutical and veterinary products) and other goods

 

August 4, 1997

Ferring B.V.

Chile

FERRING

797.850

(pharmaceutical and veterinary products) and other goods

 

August 4, 1997

Ferring B.V.

Chile

FERRING

7258724

Pharmaceutical products and substances

 

August 28, 2010

Ferring B.V.

China

FERRING

193716

(pharmaceutical substances)

 

February 11, 1997

Ferring B.V.

Colombia

FERRING

004030193

Pharmaceutical products and substances

 

September 11, 2006

Ferring B.V.

Community

FERRING

100944

(pharmaceutical products for human use)

 

April 16, 1997

Ferring B.V.

Costa Rica

FERRING

VR 1983 01626

(pharmaceutical preparations)

 

May 27, 1983

Ferring B.V.

Denmark

FERRING

87811

(pharmaceutical products and pharmaceutical preparations and substances)

 

August 15, 1996

Ferring B.V.

Dominican Republic

FERRING

251046

(pharmaceutical and health care productions)

 

February 15, 2011

Ferring B.V.

Finland

FERRING

1589265

Pharmaceutical preparations and substances

 

October 26, 1994

Ferring B.V.

Great Britain

FERRING

164318

(pharmaceutical preparations and substances)

 

July 6, 2009

Ferring B.V.

Guatemala

FERRING

00401/1995

Pharmaceutical preparations and substances

 

March 10, 1992

Ferring B.V.

Hong Kong

FERRING

1571/1997

Pharmaceutical and veterinary preparations and substances

 

August 10, 1994

Ferring B.V.

Hong Kong

FERRING

301285993

Pharmaceutical products and substances

 

February 12, 2009

Ferring B.V.

Hong Kong

FERRING

110.726

(pharmaceutical and veterinary products) and other goods

 

November 25, 2009

Ferring B.V.

Honduras

FERRING

495767

“Pharmaceutical products” and other goods

 

March 24, 1992

Ferring B.V.

Indonesia

FERRING

108840

Pharmaceutical and medical preparations and products

 

September 7, 1983

Ferring B.V.

Ireland

FERRING

95776

Pharmaceutical preparations and substances

 

July 1, 1996

Ferring B.V.

Israel

FERRING

527390

Pharmaceutical, veterinary, and sanitary substances” and other goods

 

April 3, 1990

Ferring B.V.

India

FERRING

648645

Pharmaceutical and preparations and substances

 

December 14, 1994

Ferring B.V.

India

FERRING

615597

"Pharmaceutical preparations and substances" and other goods

 

October 17, 1994,

Ferring B.V.

International Trademark Registration

FERRING

15/1997

drugs and drug material

 

January 24, 1997

Ferring B.V.

Iceland

FERRING

30,288

Pharmaceutical preparations and substances

 

April 24, 1996

Ferring B.V.

Jamaica

FERRING

39405

Pharmaceutical preparations and substances

 

September 25, 1995

Ferring B.V.

Jordan

FERRING

2,108,063

Pharmaceutical preparations

 

January 23, 1989

Ferring B.V.

Japan

FERRING

5303322

“Pharmaceutical preparations” and other goods

 

February 19, 2010

Ferring B.V.

Japan

FERRING

263.753

Agents for epidermis” and other goods

 

May 21, 1993

Ferring B.V.

South Korea

FERRING

490005

(pharmaceutical preparations and substances)

 

March 15, 1995

Ferring B.V.

Mexico

FERRING

9201732

Pharmaceutical, veterinary and sanitary preparations” and other goods

 

March 19, 1992

Ferring B.V.

Malaysia

FERRING

R 34028 C.C.

(pharmaceutical substances and preparations” and other

goods

 

April 29, 1997

Ferring B.V.

Nicaragua

FERRING

183633

pharmaceutical products; medical apparatuses and instruments

 

July 17, 1997

Ferring B.V.

Norway

FERRING

216891

Pharmaceutical preparations and substances” and other goods

 

March 16, 1992

Ferring B.V.

New Zealand

FERRING

80750

(pharmaceutical preparations and substances)

 

May 8, 1996

Ferring B.V.

Panama

FERRING

00062604

(pharmaceutical, veterinary and hygienic products) and other goods

 

April 5, 2000

Ferring B.V.

Peru

FERRING

57728

Pharmaceutical

preparations and substances” and other goods

 

April 20, 1994

Ferring B.V.

Philippines

FERRING

98447

Pharmaceutical, veterinary and sanitary preparations” and other goods;

 

May 8, 1988

Ferring B.V.

Pakistan

FERRING

372/94

Pharmaceutical preparations and substances

 

March 27, 1996

Ferring B.V.

Saudi Arabia

FERRING

333 672

pharmaceutical preparations

 

November 12, 1999

Ferring B.V.

Sweden

FERRING

T92/02010E

“Pharmaceutical preparations”

 

March 20, 1992

Ferring B.V.

Singapore

FERRING

00071/00124/143-144

pharmaceutical preparations and substances)

 

February 10, 2009,

Ferring B.V.

El Salvador

FERRING

TM7060

Hormone dependent diseases, especially in gynecology and urology areas” and other goods

 

September 18, 1992

Ferring B.V.

Thailand

FERRING

163687

Pharmaceutical preparations and substances

 

September 19, 1995

Ferring B.V.

Turkey

FERRING

589738

Pharmaceuticals, medications

 

March 16, 1993

Ferring B.V.

Taiwan

FERRING

94/12861

Pharmaceutical preparations and substances

 

November 23, 1994

Ferring B.V.

South Africa

The disputed domain name <ferring.me> was registered on August 28, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

Identical or Confusingly Similar:

That the Complainant’s rights in the FERRING Trademark for pharmaceutical products are protected by 59 trademark registrations covering 70 countries;

That the Complainant is also the owner of 50 domain name registrations incorporating the FERRING Trademark, including the <ferringme.com> domain name;

That the Complainant’s rights in the FERRING Trademark predate the registration date of the disputed domain name <ferring.me>. The Complainant received its first registration for FERRING on May 27, 1983. The Complainant also started to register the FERRING domain names in 1996 and registered the domain name <ferringme.com> in 2005. The disputed domain name <ferring.me> was registered on April 28, 2012. Ownership was transferred to the current Respondent sometime between August 6, 2012 and August 29, 2012. The Complainant has established prior rights in the FERRING Trademak through its trademark registrations;

That the disputed domain name is confusingly similar to the FERRING Trademark because it incorporates the FERRING Trademark in its entirety. This may result in the wrongful association of the disputed domain name with the Complainant’s mark;

That customers may wrongfully associate the website of the Respondent with the Complainant;

That such possibility of confusion already exists. Internet searches for the disputed domain name <ferring.me> result in hits for Complainant, including its <ferringme.com> domain name;

That the Complainant’s right in the FERRING Trademark predate the registration date of the disputed domain name <ferring.me>.

Rights or Legitimate Interests:

That the Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the FERRING Trademark, or to use this trademark in any domain name or any variation thereof;

That the Respondent has never been commonly known by the term FERRING or by the domain name <ferring.me> or any variation thereof;

That the failure to make any active use of the disputed domain name, such as the failure to provide accurate information by the Respondent to the Registrar for the disputed domain name <ferring.me> results in a lack of rights or legitimate interests in the disputed domain name;

That the passive holding of a domain name is not a use in connection with a bona fide offering of goods or services and is not a legitimate noncommercial or fair use (and cites Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, WIPO Case No. D2000-1244.

Registered and Used in Bad Faith:

That the Complainant’s right in the FERRING Trademark was well established and existed before the registration of the disputed domain name <ferring.me>;

That the current the Respondent obtained ownership of the disputed domain name sometime between August 6, 2012 and August 29, 201 and, therefore, the Respondent’s use and registration of the disputed domain name <ferring.me> occurred well after Complainant established rights in the FERRING Trademark (The California Milk Processor Board v. Shimidt, WIPO Case No. DME2011-0009.);

That the disputed domain name was registered in bad faith since at the time of registration, the registrant had knowledge of the Complainant’s well-known product and trademark FERRING;

That the disputed domain name <ferring.me> was associated to pay-per-click advertisements in the past, but that after said domain name was transferred to the current Respondent, the pay-per-click advertisements were removed and replaced with an inactive website;

That the conduct of passive holding regarding the disputed domain name <ferring.me> and the inaccuracy of the information about the Respondent on the publicly available WhoIs establishes use and registration in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark 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.

As Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant’s trademark FERRING is entirely comprised in the disputed domain name <ferring.me>.

The addition of the ccTLD “.me” is irrelevant for the purposes of this analysis, as it does not add any distinctiveness to the disputed domain name (see, mutatis mutandis, Antena 3 de Televisión S.A. c/ D. Javier García Quintas, WIPO Case No. D2002-0537, CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859).

Therefore, the Panel finds that the disputed domain name is identical to the trademark of the Complainant. The first element of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a domain name:

(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. (Policy, paragraph 4(c)).

The case file does not contain any evidence showing that the Respondent has used or made preparations to use the disputed domain name. The said domain name is not currently resolving to any website.

Since the Respondent did not file a Response to the Complaint, there is no evidence on the record suggesting that the Respondent has been commonly known as <ferring.me>. The Complainant has proven to hold more than 50 trademarks in different jurisdictions, more than 50 domain names, and is known as FERRING in various countries around the world.

In the Panel’s view, the Respondent’s non-use of the disputed domain name cannot be deemed to be fair or legitimate. The Complainant has proven that the Respondent has taken active steps to conceal its true contact details, and perhaps its true identity (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. The second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith on the part of the Respondent:

(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 website 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.”

These circumstances are examples of bad faith conducts, but they do not constitute the exclusive circumstances under which bad faith can be found.

The Complainant has pointed out that this is a case of passive holding. Therefore, the Panel will analyze the factors set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, to determine whether the Respondent’s non-use constitutes bad faith under the Policy and UDRP case law:

(i) the Complainant’s trademark FERRING does have a strong presence and reputation and is widely known around the world, as evidenced by the numerous trademark registration certificates and evidence of use submitted by the Complainant;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

(iii) the Respondent has taken active steps to conceal its actual contact details, such as telephone number and zip code, and for this reason, the Panel does not know the actual identity of the Respondent, which did not provide a Response;

(iv) the Respondent has actively provided and failed to correct false contact details, in breach of its registration agreement; and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as passing off, infringing consumer protection legislation, or infringing the Complainant’s rights under trademark law.

Therefore, this case has passed the test set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Since the Respondent has not explained to this Panel the reason for providing false contact information, and for adopting the trademark FERRING as its domain name, which fully incorporates a trademark that has a substantial presence internationally, this Panel is of the opinion that the Respondent’s passive holding conduct constitutes bad faith under the Policy. The final element of the Policy has therefore been met.

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 <ferring.me> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: December 12, 2012

 

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