WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Les Laboratoires Servier v. Jamie Feldt, GCH Construction Group

Case No. D2017-1656

1. The Parties

The Complainant is Les Laboratoires Servier of Suresnes, France, represented by IP Twins S.A.S., France.

The Respondent is Jamie Feldt, GCH Construction Group of Torrance, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <servierpharmaceuricalinc.com> is registered with Google Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 20, 2017.

The Center appointed Antony Gold as the sole panelist in this matter on October 3, 2017. 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 large, independent French pharmaceutical group. It has a presence in 140 countries. The Complainant's trading name is "Servier". This is protected by trade mark registrations in multiple jurisdictions including, by way of example only, the following;

- European Union Trade Mark, registration number dated 004279171 for SERVIER, registered on October 15, 2007, in classes, 05, 35, 41, 42 and 44;

- International Trade Mark registration number 814214 for SERVIER, registered on August 5, 2003 in classes 05, 35, 41, 42 and 44.

The Complainant also holds numerous "Servier"-related domain names, including <servier.com> and <servier.fr>. These point to websites which contain information about the Complainant and its goods and services.

The disputed domain name was registered by the Respondent on August 7, 2017. It does not point to an active website.

5. Parties' Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights.

In support of its contention that it has rights in the trade mark SERVIER, the Complainant relies on its many trade mark registrations for SERVIER, details of two of these marks being set out above.

The Complainant says that the disputed domain name comprises the whole of its SERVIER mark together with the terms "pharmaceurical"' and "inc", followed by the generic Top-Level Domain ("gTLD") suffix ".com". It says that previous UDRP panels have found that the gTLD suffix should be disregarded for the purpose of considering identicality or confusing similarity.

The Complainant asserts that, whilst "pharmaceurical" has no meaning in the English language, it is probably intended to mean "pharmaceutical", which is descriptive of the products and services provided by the Complainant as a pharmaceutical company. "Inc" is a well-known abbreviation for "incorporated", which is a type of corporate entity.

Accordingly, the Complainant says, the only distinctive component of the disputed domain name is the word "servier", which is identical to the Complainant's SERVIER trade mark. The Complainant refers to the decision of the panel in Gilead Sciences, Inc. v. Domains by Proxy / Online Management, WIPO Case No. D2014-1235, which held that the addition of non-distinctive and generic terms did not lessen the inevitable confusion between the domain name and the complainant's trade mark, because they were terms which were descriptive of the products and services provided by the complainant. For this reason, the panel found that the disputed domain name was confusingly similar to a trade mark in which the complainant had rights. The Complainant asserts that the same circumstances are present in these proceedings.

The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It draws attention to paragraph 4(c) of the Policy which, without limitation, sets out circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. The Complainant says that the Respondent is unable to demonstrate that any of these grounds is applicable to the circumstances of its registration of the disputed domain name. In particular, it says that, despite conducting online Internet enquiries, it cannot trace any record of the business activities of the Respondent. Accordingly, there is no evidence to suggest that the Respondent requires the disputed domain name for the purpose of using it in connection with a bona fide offering of goods and services, as is evident from the fact that the disputed domain name does not resolve to an active website.

The Complainant also says that a worldwide trade mark search has failed to reveal any SERVIER trade marks other than those in the name of the Complainant or its affiliate, Biofarma. Accordingly, it says, the Respondent cannot claim to have any trade mark rights in the word "Servier". Moreover, it says that "Servier" is an uncommon surname in France and likely to be even less common in the United States of America, where the Respondent claims to reside. There is no indication that the Respondent is commonly known by the disputed domain name.

In addition, the Complainant says that there is no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to mislead consumers or tarnish the trade mark in issue.

For these reasons, the Complainant says that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name.

Lastly, the Complainant says that the disputed domain name was registered and used in bad faith. In support of this contention, the Respondent refers to the rarity of "Servier" as a surname. For this reason, it says that the Respondent is likely to have registered the disputed domain name because of its association with the Complainant, not least because the words "pharmaceurical" and "inc", which are also components of the disputed domain name, are clearly referable to the Complainant's business in pharmaceuticals. The Complainant says that the Respondent would, or should, have run undertaken a search on the Internet prior to registering the disputed domain name. Any such search would have revealed the Complainant's business. Accordingly, it says that there should be a presumption that the Complainant registered the disputed domain name in bad faith in order to take advantage of the Complainant's reputation and to create a likelihood of confusion by misleading consumers into believing that there was a connection between the disputed domain name and the Complainant's products. The Complainant says that, if its assertions are incorrect, the onus is on the Respondent to provide its own account as to why it registered the disputed domain name.

The Complainant acknowledges that the disputed domain name has not been used and that there is not at present any indication that the Respondent intends to use it. However, the Complainant draws attention to earlier decisions of panels under the Policy to the effect that passive holding of a domain name might amount to bad faith use. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel set out circumstances in which such a finding might be made. In Aventis and Aventis Pharma SA. v. Bug Software/Paulo Andrade, WIPO Case No. D2004-0878, the panel held that, on the facts of that case, it was "not possible to imagine any active use of the disputed domain names by the registrant that would not be illegitimate, unless registrant receives permission from [the complainant]".

In the current proceedings, the Complainant contends that, at the time of registration of the disputed domain name, the Complainant's longstanding use of SERVIER as its trade mark would have been known to the Respondent. Furthermore, there is an absence of any known connection between the Respondent and the word "Servier" and the Complainant cannot find any legitimate reason for the Respondent to have registered the disputed domain name nor any possible lawful use of the disputed domain name which could be made by the Respondent. In their totality, it says that these factors justify a finding that the passive holding of the disputed domain name amounts to bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent's failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(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 with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established its ownership of many trade mark registrations for SERVIER, including the two trade marks in respect of which full details are set out above. It therefore has rights in SERVIER.

As the Complainant has said, it is established practice for the gTLD suffix (in this case ".com") to be disregarded for the purpose of considering identicality or confusing similarity. The components of the disputed domain name, other than the gTLD suffix and the Complainant's trade mark, comprise "pharmaceuricalinc" which, as the Complainant says will be perceived by Internet users as a misspelling of "pharmaceutical", and "inc".

"Pharmaceurical" in its corrected form, is descriptive of the goods and services supplied by the Complainant. The inclusion of "pharmaceurical" together with the descriptive term "inc", as an abbreviation of a widely-known form of corporate entity, does not dispel the confusing similarity between the disputed domain name and the Complainant's trademark, the latter being clearly recognizable in the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name.

How these provisions are usually applied in practice is explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1. "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."

On the basis of the evidence available to the Panel, there is nothing to suggest that the Respondent has made, or intends to make, any use of the disputed domain name in connection with a bona fide offering of goods and services nor is there any indication that the Respondent has commonly been known by the disputed domain name. As the disputed domain name does not point to an active website, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not a licensee of the Complainant nor has it been otherwise permitted by the Complainant to register and use the disputed domain name.

Accordingly, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and, as a consequence, the burden of production shifts to the Respondent to seek to dispel this inference. As there has been no communication at all from the Respondent, it has not satisfied this burden.

The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

As at the date of registration of the disputed domain name, the Complainant was very well known. Moreover, the use of the Complainant's trade mark in its entirety in the disputed domain name, in combination with the word "pharmacuerical", the correct spelling of which is descriptive of the goods and services offered by the Complainant, establishes, on at least a balance of probabilities, an awareness by the Respondent of the Complainant's business as at the date of registration of the disputed domain name.

In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel found that bad faith registration and use was established even though the domain name in issue was not being actively used, in circumstances where;

- the complainant's trademark had a strong reputation and was widely known;

- the respondent had not provided any evidence of any actual or contemplated good faith use by it of the domain name,

- the respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name

- the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

- taking into account all of the above, it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate.

Not all these factors are present in the facts of this case but as explained in WIPO Overview 3.0, section 3.3, "panelists will look at the totality of the circumstances in each case". The Panel in this case takes particular account of;

- the fame of the Complainant's mark;

- the fact that, for the reasons explained earlier, the evidence clearly points to an awareness by the Respondent of the Complainant's business as at the date of registration;

- the Respondent has not responded to the Complainant or made any attempt to explain or justify its registration of the disputed domain name;

- it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate.

For these reasons, the Panel finds that the disputed domain name was registered and used in bad faith.

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 <servierpharmaceuricalinc.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: October 16, 2017