WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biofarma, SAS v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Zhang xixuan, Zhang xixuan
Case No. D2016-2055
1. The Parties
The Complainant is Biofarma, SAS of Suresnes, France, represented by IP Twins S.A.S., France.
The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Zhang xixuan, Zhang xixuan of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <prestalide.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2016, 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 October 10, 2016 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 October 11, 2016.
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 October 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2016.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on November 9, 2016. 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 owns trademark registrations for the PRESTALIDE mark, as noted below:
French Trademark Registration PRESTALIDE No. 4,266,478, with application date April 20, 2016, and with publication of the registration on August 12, 2016, designating goods in international class 05;
European Union Trademark Registration PRESTALIDE No. 15,373,342, with application date April 25, 2016 and registered on August 10, 2016, designating goods in international class 05.
The disputed domain name <prestalide.com> was registered on April, 25, 2016. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant alleges that it is the largest French pharmaceutical group on an independent level and the second largest pharmaceutical French group in the world, being active in 140 countries and having more than 21,000 employees throughout the world.
The Complainant states that the disputed domain name is strictly identical to its trademarks, as the exact term “prestalide” is identically reproduced and the addition of the generic Top-Level Domain (“gTLD”) “.com” is not significant in determining whether the disputed domain name is identical or confusingly similar to the mark.
Also, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not commonly known by the disputed domain name - while it has never been used -, and has acquired no trademark or service mark rights related to the “prestalide” term.
Moreover, the Complainant asserts that the Respondent has not intended or made preparations to use the disputed domain name in connection with a bona fide offer of goods or services, evidenced by the fact that the disputed domain name has not been exploited in any way whatsoever.
The Complainant affirms that the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s PRESTALIDE trademarks, and is not commercially linked to the Complainant.
Furthermore, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith, because it is a company so widely well-known that it is inconceivable that the Respondent ignored the rights of the Complainant on the term PRESTALIDE, also because Respondent registered the disputed domain name on the day that the Complainant filed the trademark application for PRESTALIDE before the European Union Intellectual Property Office.
The Complainant defends that the sole detention of the disputed domain name by the Respondent, in an attempt to prevent the Complainant from reflecting its trademark and company name in a domain name, is a strong evidence of bad faith.
Also, the Complainant states that it sent a cease-and-desist notice to the Respondent on August 25, 2016, and, as of the receipt of the notice, the Respondent was made aware of the trademark rights of the Complainant. Therefore, all subsequent use of the disputed domain name by the Respondent should be considered as being in bad faith.
Finally, the Complainant argues that Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and due to all the circumstances of the case, it can be said that the Respondent is acting in bad faith, as bad faith is not limited to a positive action.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine confusing similarity. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent confusion (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”)).
In this case, it is evident that the disputed domain name <prestalide.com> incorporates the Complainant’s PRESTALIDE trademark in its entirety and contains no additional terms.
On the subject of any generic gTLD suffix in a domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of WIPO Overview 2.0). Therefore, the suffix “.com” in the disputed domain name cannot be taken into account as a distinctive element. See Tinynova LLC v. Chris Edwards, WIPO Case No. D2016-0804 (“the disputed domain name incorporates the denominative part of the mark BACKIT in its entirety, with the mere addition of the generic Top-Level Domain suffix ".com", which can be disregarded being a mere technical requirement of registration”).
Accordingly, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that it has no connection with the Respondent, who has not been licensed or authorised in any way to use the Complainant's trademark.
Paragraph 4(c) of the Policy provides for the respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(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 above circumstances are illustrative and rights or legitimate interests may be established by the Respondent alternatively to the satisfaction of the Panel.
The Panel is satisfied that the Complainant has made out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. In the Panel’s opinion the Respondent does not appear to have used or made any preparations to use the disputed domain name in connection with any bona fide offering of goods or services prior to the dispute, nor a legitimate, noncommercial or fair use of the disputed domain name in accordance with the Policy.
Further, there is absolutely no evidence of record that the Respondent has ever been commonly known by the disputed domain name, or any name identical or similar to the disputed domain name, and neither the WhoIs information indicates otherwise.
Therefore, considering that the Respondent did not present any allegations or evidence of rights it might have in the disputed domain name, the Panel concludes that the prima facie case established by the Complainant has not been rebutted.
Based on the evidence of record, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Having reached the view that the Respondent lacks any legitimate interest to use Complainant’s mark and for the reasons set out above it is reasonable to infer that Respondent wishes to take advantage in registering the disputed domain name.
In this case, the Panel notes that the disputed domain name was registered on the very same day that the Complainant filed the trademark application for PRESTALIDE at the European Union Intellectual Property Office. The Panel notes that, on the balance of probabilities, the Respondent noticed the application under examination of the Complainant’s trademark in the European Union Intellectual Property Office database before registering the disputed domain name and, before the Complainant was able to obtain registration of the applied-for trademark PRESTALIDE, the Respondent registered the disputed domain name in order to take advantage of the Complainant’s likely rights in that mark. Such circumstance, along with other evidence presented in the record, demonstrate that the Respondent was aware of the Complainant at the time it registered the disputed domain name.
In fact, the Panel finds that it is hard to believe that the Respondent’s registration of the disputed domain name on the very same day of the Complainant’s application for the PRESTALIDE mark with the European Union Intellectual Property Office was a coincidence, especially considering that “Prestalide” is not an ordinary term in English or French.
Also, the consensus view of UDRP panelists 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”. (see paragraph 3.2 of WIPO Overview 2.0).
Here, the Panel finds that the lack of active use of the disputed domain name and the fact that the Respondent had not responded to the cease and desist letter sent by the Complainant on August 25, 2016 nor replied to the Complaint under the Policy, evidence the Respondent’s bad faith.
Furthermore, the use of a privacy service to conceal the identity of the registrant, as was done here, is further evidence and indicia of bad faith registration and use. See Groupe Adeo v. Domain Hostmaster, Customer, WIPO Case No. D2016-1347.
Given the above circumstances, and in the absence of a response and any evidence rebutting the Complainant’s contentions, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <prestalide.com> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: November 23, 2016