WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BIOGARAN v. Loyd J. Childers
Case No. D2015-0106
1. The Parties
Complainant is BIOGARAN of Colombes, France, represented by Salans FMC SNR Denton Europe, AARPI, France.
Respondent is Loyd J. Childers of West Des Moines, Iowa, United States of America.
2. The Domain Name and Registrar
The disputed domain name <biogaran-au.com> is registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2015. On January 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on February 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 23, 2015.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 6, 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.
4. Factual Background
The trademark upon which the Complaint is based is BIOGARAN. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the BIOGARAN trademark in different countries, such as French Trademark Registration No. 3038362, dated July 4, 2000; International Trademark Registration No. 751187, dated January 2, 2001; International Trademark Registration No. 837217, dated of January 22, 2004; and Australian Trademark Registration No. 931245, dated October 16, 2002. Complainant also owns various domain names made up of the denomination “biogaran”, such as, <biogaran.com> and <biogaran.fr>.
According to the documentary evidence and contentions submitted, Complainant is a French company incorporated in 1996, which is specialized in the manufacture and sale of generic medicines. Complainant belongs to Servier SAS, a major international pharmaceutical group created in 1954 with offices throughout the world, in more than 140 countries.
The disputed domain name was registered on September 29, 2014.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical to Complainant’s trademark because: (i) it incorporates the BIOGARAN trademark in its entirety; (ii) the addition of the term “-au” just before the generic Top-Level Domain (gTLD) suffix, which corresponds to the country code for Australia, leads the public to believe that the website is Complainant’s website for Australia, and reinforces the likelihood of confusion; and (iii) the gTLD “.com” is to be disregarded because it is not sufficient to dismiss any likelihood of confusion.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because: (i) Complainant has no direct connection with Respondent, and has not granted any right in the BIOGARAN trademark to Respondent; (ii) Respondent was aware of Complainant’s well-known BIOGARAN trademark when it registered the disputed domain name; (iii) Respondent uses the disputed domain name with an automatic redirection of users to the official website of Complainant, but Respondent does not disclaim any relationship with the trademark owner; (iv) Respondent falsely suggests that it is the BIOGARAN trademark owner and uses false email addresses; (v) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent because: (i) Respondent must have known of Complainant’s right in the BIOGARAN trademark when registering the disputed domain name since it uses the disputed domain name to make consumers believe that the emails he sent via email addresses created from the disputed domain name, in the format “@biogaran-au.com”, are legitimate; (ii) Respondent supplied fake contact details when registering the disputed domain name; (iii) Respondent uses the disputed domain name with an automatic redirection of users to the official website of Complainant, but Respondent does not disclaim any relationship with the trademark owner; (iv) the disputed domain name is used without Complainant’s consent, as part of a broader scheme to falsely impersonate Complainant, with a view to furtherance of some fraud or deception upon the public; and (v) Complainant has received several emails from individuals who claimed to have been offered employment with Complainant from Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant have complied with such requirements.
B. Identical or Confusingly Similar
The disputed domain name <biogaran-au.com> incorporates the BIOGARAN trademark in its entirety. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
As decided in other UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., WIPO Case No. D2009-0924. See also Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. In the instant case, the combination of the word “biogaran” with the term “au” does not affect the overall impression that the BIOGARAN trademark is the dominant part of the disputed domain name. In fact, the addition of the term “au”, which points to the country code for Australia, reinforces the likelihood of confusion by leading the public to believe that a website to which the disputed domain name resolves is Complainant’s website for Australia.
Finally, the addition of the gTLD suffix “.com” is generally non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the BIOGARAN trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view in the URDP panel decisions has been that a complainant is required to make out an initial prima facie case, respondent carrying the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview 2.0, paragraph 2.1.
In the instant case, Complainant has done enough to establish a prima facie case and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent’s rights or legitimate interests in the disputed domain name. In fact, the Panel finds as reasonable Complainant’s contentions that Respondent has never been licensed or otherwise authorized to use the disputed domain name, and that Respondent has no direct connection with Complainant.
The Panel attempted to reach a website to which the disputed domain name would resort but this attempt was unsuccessful as the disputed domain name appeared to be inactive on March 16, 2014. Therefore, the Panel agrees that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use established in prior UDRP decisions. In addition, none of the three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy shows a result in favor of Respondent.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
The Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In view of the circumstances of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant’s BIOGARAN trademark when Respondent registered the disputed domain name. In fact, the Panel sees no plausible explanation for Respondent’s adoption of the term “biogaran” in the disputed domain name other than to attract Internet users by creating a likelihood of confusion with Complainant’s trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
On the basis of the evidence adduced by Complainant, the only reasonable conclusion that can be drawn is that Respondent, knowing of the name, fame and reputation of Complainant and its trademark, has deliberately chosen to appropriate that name and reputation for the purpose of illicit acts, as the evidence of fraudulent emails indicates.
The fact that the disputed domain name appears to be currently inactive does not change a finding of bad faith use. The consensus view in the URDP decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview 2.0, paragraph 3.2). See Telstra Corporation Limited v. Nuclear Marshmallos, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc., WIPO Case No. D2000-0022; J. García Carrión, S.A. v. María José Catalán Frias, WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412.
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. In the instant case the majority of the facts referred to above are present: Complainant owns a well-known trademark; there is no response to the complaint;and there is no indication in the records of a possible good faith use of the disputed domain name.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was registered and has been used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <biogaran-au.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: March 16, 2015