WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Laboratoires Servier v. Domains By Proxy, LLC / Name Redacted
Case No. D2017-1843
1. The Parties
Complainant is Les Laboratoires Servier of Suresnes Cedex, France, represented by IP Twins S.A.S., France.
Respondent is Domains By Proxy, LLC of the United States of America / Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <lesservier.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2017. On September 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 26, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 26, 2017.
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 Respondent of the Complaint, and the proceedings commenced on September 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 18, 2017.
The Center received a communication from a third party on October 1, 2017.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 6, 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
Complainant is a company organized under the laws of France that belongs to the pharmaceutical group of companies “Les Laboratoires Servier”.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “Servier” including, inter alia:
- Word mark SERVIER, European Intellectual Property Office (“EUIPO”), Registration No.: 004279171; Registration Date: October 15, 2017, status: active;
- Word mark SERVIER, World Intellectual Property Organization (“WIPO”), Registration No.: 814214, Registration Date: August 5, 2003, status: active;
- Word-/device mark SERVIER, WIPO, Registration No.: 549079; Registration Date: January 19, 1990, status: active;
- Word-/device mark SERVIER, WIPO, Registration No.: 571972, Registration Date: May 29, 1991, status: active.
Moreover, Complainant has evidenced to own numerous domain names incorporating its SERVIER trademark, inter alia, <servier.com>, <servier.fr>, and <laboratoires-servier.com>.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of the United States of America and has registered the disputed domain name on August 15, 2017. As of the time of the rendering of this Decision, the disputed domain name resolves to an error page stating that the requested URL was not found on the respective server. On October 1, 2017, the Center received an email from a third party under the same name as the registered owner of the disputed domain name, claiming not to own nor to have ever owned the disputed domain name and to never have done business with the Registrar to obtain it.
Complainant has provided copies of various emails dated August 25, 2017 as well as September 8, 2017, which were apparently sent by Respondent using an email address under the disputed domain name, namely <[…]@lesservier.com> which appeared to have been sent by an Australian entity within Complainant’s group of companies in an attempt to conduct false job interviews followed by a request that the addressees of such emails sent Respondent money to conclude a work contract.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to be the largest independent French pharmaceutical group and the second largest French pharmaceutical company worldwide with branches in 140 countries and presences in 148 countries worldwide.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s SERVIER trademark since the disputed domain name simply includes the entirety of Complainant’s SERVIER trademark together with the term “les” which is the French equivalent of the plural pronoun “the”.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Respondent is neither commonly known by the disputed domain name nor has it acquired any trademark rights related to the “Servier” term, (2) Respondent reproduces Complainant’s SERVIER trademark without any license or authorization to do so and (3) Respondent is using the disputed domain name to send emails to a larger number of people reproducing the SERVIER trademark and logo, and impersonating Complainant’s personnel, offering working positions, conducting false job interviews and requesting money be sent to conclude a work contract.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Complainant’s SERVIER trademarks are so widely well-known that it is inconceivable that Respondent ignored Complainant’s earlier rights in the “Servier” term, (2) the sending of emails under the disputed domain name such as <[…]@lesservier.com> in an attempt to impersonate Complainant’s Australian subsidiary and to offer fake positions in consideration for money be paid clearly demonstrates that Respondent wants to take advantage of Complainant’s trademark’s reputation and (3) Respondent used a well-known privacy service in order to keep its identity secret.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <lesservier.com> is confusingly similar to the SERVIER trademark in which Complainant has rights.
The disputed domain name incorporates the SERVIER trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “les”, which is the French equivalent of the plural pronoun “the” (as it is also reflected in Complainant’s company name “Les Laboratoires Servier”), does not dispel the confusing similarity arising from the incorporation of Complainant’s SERVIER trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s SERVIER trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Servier”. Finally, Respondent has not used the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent apparently sent fake emails under the disputed domain name impersonating Complainant’s Australian subsidiary and its personnel in order to conduct false job interviews and, thus, to collect money that it had requested from the addressees of the fake emails to conclude work contracts.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a formal Response, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Using the disputed domain name in a fraudulent manner by sending fake emails in order to induce addressees to send money to Respondent to conclude a work contract as a consequence of a false job interview, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusing with Complainant’s SERVIER trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s fake emails. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, the Panel has also noted the email by a third party under the same name as the registered owner of the disputed domain name sent to the Center on October 1, 2017, claiming that said third party did never own the disputed domain name nor even attempted to register it, thus allegedly was a victim to an identity theft. The Panel is not in a position to verify such third party’s contentions, but independent thereof, the outcome of this proceeding would still be the same. If the third party in fact is the registered owner of the disputed domain name, it apparently did not claim to have used the disputed domain name in good faith. Had, on the contrary, Respondent truly undertaken an identity theft when registering the disputed domain name, this would indeed support the Panel’s finding of a registration and making use of the disputed domain name in bad faith.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <lesservier.com> be transferred to Complainant.
Stephanie G. Hartung
Date: November 15, 2017
1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See: ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.