WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Les Laboratoires Servier, SAS v. Myan Mar

Case No. D2011-0404

1. The Parties

The Complainant is Les Laboratoires Servier, SAS of Neuilly-sur-Seine, France, represented by Sophie Mourichoux, France.

The Respondent is Myan Mar of Mandalay, Myanmar.

2. The Domain Name and Registrar

The disputed domain name <myservier.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 2, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On March 3, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on March 4, 2011.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2011.

The Center appointed Derek M. Minus as the sole panelist in this matter on April 6, 2011. 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 French pharmaceutical company created by Doctor Jacques Servier which specialises in particular in cardiologic, diabetic, mental health and rheumatologic conditions. It is currently one of the leading independent pharmaceutical company in France and worldwide. It has several subsidiary companies located throughout the world including one in Myanmar. It employs over 20,000 people worldwide and is well-known both in France and at an international level.

The Complainant has registered several trademarks for SERVIER some of which are:

- European Community Trademark for the word SERVIER Reg. No. 004279171 registered on October 15, 2007 for classes 5, 35, 41, 42, 44;

- International Trademark for the word SERVIER Reg. No. 814214 registered on August 5, 2003 for classes 5, 35, 41, 42, 44;

- Myanmarese Trademark for the word SERVIER Reg. No. IV/9467/2010 registered on August 8, 2001 for classes 5, 35, 42;

- European Community Trademark for the SERVIER and logo Reg. No. 004279188 registered on September 18, 2007 for classes 1, 3, 5, 10, 16, 35, 41, 42, 44;

- International Trademark for the SERVIER and logo Reg. No. 549079 registered by on January 19, 1990 for classes 1, 3, 5, 10, 16, 35, 41, 42.

- Myanmarese Trademark for the SERVIER and logo Reg. No. IV/9468/2010 registered on June 21, 2001 for class 5.

It has also registered the domain names <servier.fr>, <serviermyanmar.com> and <servier.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(i) The Complainant is the owner of the SERVIER registered trademark to which the Domain Name is confusingly similar.

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name because:

(1) the Respondent has not been authorized by the Complainant to register or use the Domain Name;

(2) Prior to any notice of the dispute, there was no evidence that the Respondent used the term “myservier” to offer goods or services;

(3) the Respondent has note been commonly known by the Domain Name;

(4) the Respondent has not made a legitimate noncommercial or fair use of the Domain Name and;

(5) the Respondent’s intention to mislead consumers is further demonstrated by the fact that the registrant of the Domain Name sent emails to the employees of the Complainant in Myanmar, inviting them to log in. It is therefore obvious that the sole purpose of the registration of the Domain Name is both fraudulent and illegitimate.

(iii) The Respondent registered and is using the Domain Name in bad faith because:

the Respondent is intentionally using the Domain Name to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.

As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)).

A. Identical or Confusingly Similar

The Complainant submits that the Domain Name is confusingly similar to the trademark in which the Complainant has extensive rights, as the Domain Name incorporates the Complainant’s SERVIER trademark in its entirety with the addition of the common word “my” at the start and the gTLD “.com” identifier at the end.

It has been consistently held in numerous UDRP decisions that domain names are identical or confusingly similar to a complainant’s trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”, see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201.

Further, merely adding the generic, descriptive word “my” and the top level domain “.com” identifier, is not sufficient to create a distinct domain name, as it does not sufficiently distinguished the Domain Name from the Complainant’s trademark (see Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026). The addition of descriptive terms in the domain name does not generally affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark (see ACCOR, Société Anonyme à Directoire et Conseil de Surveillance v. Tigertail Partners, WIPO Case No. D2002-0625, and Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445, F. Hoffmann-La Roche AG v. Dmitry Gerasymenko, WIPO Case No. D2007-0736, F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694, and F. Hoffmann-La Roche AG v. Brian Robinson, WIPO Case No. D2007-0659.

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trademark, in which the Complainant has rights and the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:

“(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.”

The Respondent does not appear to have been commonly known by the Domain Name, is not a licensee or an agent of the Complainant, nor in any way authorized to use the Complainant’s SERVIER trademarks, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

As was stated in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, the “mere registration[, or earlier registration of a domain name], does not establish rights or legitimate interests in the disputed domain name”. Here according to the Registrar’s verification, the Respondent registered the Domain Name on February 16, 2011, after the Complainant’s registration of the Myanmarese Trademark for the word SERVIER in 2001.

The Respondent has not provided any evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services and there is no evidence that the Respondent is making a legitimate, noncommercial or fair use of the Domain Name, without intent for commercial gain.

On the contrary the Complainant’s evidence suggests that the Domain Name automatically redirected to a Google mail page where the SERVIER logo is reproduced without authorization. In Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990, the panel was of the view that “diversion of Internet traffic by the Respondent to other, unrelated websites, does not represent a use of the domain name in connection with a bona fide offering of goods and services. Rather, the conduct of the Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products.”

Given that the Complainant has satisfactorily made out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production is on the Respondent to establish its rights or legitimate interests in the Domain Name (see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Sampo plc v. Tom Staver, WIPO Case No. D2006-1135; Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003).

The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the Domain Name. Hence, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:

“(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 web site or location or of a product or service on your web site or location.”

According to the submission of the Complainant, “[t]he disputed domain name was registered for the sole purpose of attracting Internet users and more precisely employees from LES LABORATOIRES SERVIERS in Myanmar for commercial gain and more precisely, in order to obtain confidential information.”

The Complainant provided a screen shot of the web page to which the Domain Name resolved. It is in French and features a Google professional services login page for users with a “@myservier.com” account. Above the login box the Complainant’s logo and the Google “mail” logo are prominently featured.

The deliberate and misleading use of another person’s trademark for the purpose of diverting Internet traffic to their own web site is evidence of bad faith. As was held by the panel in Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248, “it could never be a legitimate or fair use to select a domain name which is confusingly similar to another person’s trade or service mark, with a view to misleadingly attracting visitors to a website linked to that domain name.”

Again from the Complainant, “[t]he intention to mislead consumers is further demonstrated by the fact that the registrant of the disputed domain name sent emails to the employees of LES LABORATOIRES SERVIER in Myanmar, inviting them to log in.” But that, “[i]t has to be mentioned however that the above-mentioned page inviting LES LABORATOIRES SERVIER’s employees to log in has been taken down after we filed a formal complain with Google Inc.”

The reproduction of the Complainant’s registered trademark and logo on its website was an attempt to create the likelihood of confusion with the Complainant’s trademarks and make it appear that the Domain Name is affiliated to the Complainant. If, as the Complainant submits, the Respondent “spammed” the Complainant’s employees in Myanmar, then the purpose of the registration of the Domain Name is both fraudulent and illegitimate.

In Confédération Nationale du Crédit Mutuel v. Crédit Mutuele Bank Sénégal, WIPO Case No. D2007-1331, the complainant provided evidence that the disputed domain name had at some stage been used in connection with “spamming” activities. The panel found that that such use of the domain name “constitutes bad faith as it includes criminal activities and may divert internet users, damage the Complainant’s reputation and disrupt its business”. In that case it was noted that:

“It is well established that spamming activities constitute bad faith use under the Policy (cf. Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395; Banco Itaú S.A. v. Verlene L. Miller, WIPO Case No. D2005-0748).”

Accordingly, the Panel finds from the circumstances reviewed above, that the Respondent registered and is using the Domain Name in an attempt 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.

Further the use of the Domain Name to engage in what appears to be fraudulent activities constitutes evidence of bad faith registration and use of a domain name for purposes of paragraph 4(a)(iii) of the Policy. The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <myservier.com> be transferred to the Complainant.

Derek M. Minus
Sole Panelist
Dated: April 20, 2011