WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ISISPHARMA France SAS, ISIS PHARMA GmbH v. Nikolay Petkov, Kin Eood
Case No. D2018-0095
1. The Parties
The Complainants are ISISPHARMA France SAS of Wasquehal, France and ISIS PHARMA GmbH of Brig, Switzerland, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Nikolay Petkov, Kin Eood of Pleven, Bulgaria.
2. The Domain Names and Registrar
The disputed domain names <buy-isispharma.com>, <isispharma-uk.com> and <isispharma-usa.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2018. On January 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 19, 2018, 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 January 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on February 28, 2018. 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 Complainants ISISPHARMA France SAS (hereinafter, “the first Complainant”) and ISIS PHARMA GmbH (hereinafter, “the second Complainant”) are fully owned by the French company Dewavrin SA. Dewavrin SA owns the second Complainant through its fully owned subsidiary Compagnie Lainiere.
The Complainants are the owners of multiple trademark registrations across various jurisdictions. Furthermore, the second Complainant licenses its trademarks to the first Complainant, which sells Isispharma branded products.
The Complainants have produced and marketed their proprietary line of skin care products under the trademark ISISPHARMA since 2002. The Isispharma products are manufactured in the Complainants’ own production units in France in conformity with French and European Union regulations.
The second Complainant is the owner of the French trademark registration No. 3651571 for ISIS PHARMA
DERMATOLOGIE (figurative mark), registered on May 18, 2009, in classes 3 and 5; the French trademark registration No. 3334692 for ISISPHARMA (word mark), registered on January 13, 2005, in classes 3 and 5; the European Union Trade Mark registration No. 008296221 for ISISPHARMA (word mark), registered on April 26, 2010, in classes 3 and 5; and the International trademark registration No. 1209350 for ISISPHARMA (word mark), registered on February 4, 2014, in classes 3 and 5.
The Complainants’ parent company Dewavrin SA is the owner of the domain name <isis-pharma.com>, which was registered on November 13, 2002 and is pointed to a website providing information on ISISPHARMA products.
The disputed domain names <buy-isispharma.com>, <isispharma-uk.com> and <isispharma-usa.com> were registered on July 11, 2017 and are pointed to websites displaying the Complainants’ trademarks and offering for sale purported Isispharma skincare products.
5. Parties’ Contentions
The Complainants contend that the disputed domain names are confusingly similar to the trademark ISISPHARMA, since they encompass the trademark in its entirety with the mere addition of the descriptive term “buy” and the geographical indicators “uk” and “usa”.
The Complainants also state that the Respondent has no rights or legitimate interests in the disputed domain names because: i) the Respondent is not sponsored by or affiliated with the Complainants and has not been given permission to use the Complainants’ trademarks in any manner; ii) the Respondent is not commonly known by the disputed domain names; iii) the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, since it is pointing the disputed domain names to websites imitating the Complainants’ website and providing no disclaimer as to the lack of affiliation with the Complainants, thus conveying the false impression that the Respondent is authorized to use the Complainants’ trademark and not fulfilling the criteria laid down in the Oki Data test to fall within the safe harbors of paragraphs 4(c)(i) and 4(c)(ii) of the Policy.
The Complainants submit that the Respondent registered the disputed domain names in bad faith since: i) the Complainants and their trademark ISISPHARMA are known internationally and the Complainants have marketed and sold their goods and services using this trademark since 2002, well before the Respondent’s registration of the disputed domain names; ii) by registering domain names confusingly similar to the Complainants’ trademark ISISPHARMA, the Respondent has demonstrated knowledge of, and familiarity with, the Complainants’ brand and business; and iii) the prominent display of the Complainants’ ISISPHARMA logo and pictures of ISISPHARMA products on the websites associated with the disputed domain names, alongside the sale of ISISPHARMA branded skin care products, demonstrates the Respondent’s knowledge of the Complainants’ brand.
The Complainants also point out that the Respondent’s use of the disputed domain names constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under paragraph 4(b)(iii) of the Policy, because the disputed domain names are confusingly similar to the Complainants’ trademarks and the website at the disputed domain names are being used to offer Complainants’ goods or services without the Complainants’ authorization or approval.
As further circumstances evidencing bad faith, the Complainants state that they previously brought a complaint against an individual sharing several contact details with the Respondent in this case, who had registered domain names confusingly similar to the trademark ISISPHARMA (ISISPHARMA France SAS and ISIS PHARMA GmbH v. Kristian Petkov, Kin Pleven Ltd.,
WIPO Case No. D2017-0816), and that the Respondent currently holds domain name registrations that misappropriate the trademarks of other
well-known brands and businesses. Therefore, the Complainants conclude that the Respondent is also engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.
In addition, the Complainants highlight that the Respondent did not reply to the cease and desist letter sent by the Complainants before the filing of the Complaint.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of valid trademark registrations encompassing ISISPHARMA, including trademark registrations for the word mark ISISPHARMA registered in the name of the second Complainant.
The Panel notes that the disputed domain names reproduce the trademark ISISPHARMA in its entirety, with the mere addition of descriptive terms (“buy”) or geographical indicators (“uk” and “usa”), which are not sufficient to exclude confusing similarity.
In view of the above, the Panel finds that the Complainants have proven that the disputed domain names are confusingly similar to a trademark in which they have established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainants have made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainants and the Respondent and the Complainants have not authorized the Respondent to register or use their trademark or the disputed domain names.
Moreover, there is no evidence that the Respondent might have been commonly known by the disputed domain names or that it might have used the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use before receiving any notice of the dispute.
On the contrary, the evidence submitted by the Complainants, which have not been challenged by the Respondent, demonstrates that the Respondent has pointed the disputed domain names to websites displaying the Complainants’ trademarks and promoting the sale of purported Isispharma products without providing any accurate disclaimer, thus failing to satisfy the conditions set forth in the leading case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and unduly suggesting an affiliation with the Complainants that does not exist.
Therefore, the Panel finds that the Complainants have proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of the Complainants’ prior registration and use of the trademark ISISPHARMA, of the confusing similarity of the disputed domain names with the trademark and of the use of the trademark made on the Respondent’s websites, the Panel finds that the Respondent likely registered the disputed domain names having the Complainants’ trademark in mind.
The Panel also finds that, in view of the use of the disputed domain names to redirect users to websites currently online, publishing the Complainants’ trademarks and offering for sale purported ISISPHARMA skin care products without providing any disclaimer as to the lack of affiliation with the Complainants, the Respondent clearly intended to attract Internet users to its websites for commercial gain, by causing a likelihood of confusion with the Complainants’ trademarks and misleading users into believing that the Respondent is affiliated with the Complainants.
As a further circumstance evidencing the Respondent’s bad faith, the Complainants have demonstrated that the Respondent is at least familiar with the registration of domain names incorporating third-party trademarks.
Moreover, the Respondent’s failure to reply to the Complainants’ cease and desist letter and to submit a Response supports the finding that the Respondent registered and used the disputed domain names in bad faith.
In light of the above, the Panel finds that the Complainants have proven that the Respondent registered and is using the disputed domain names in bad faith according to paragraph 4(a)(iii) 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 names <buy-isispharma.com>, <isispharma-uk.com> and <isispharma-usa.com> be transferred to the Complainants.
Date: March 15, 2018