WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Merial v. VisaPrint Technologies c/o Vistaprint North American Services Corp.
Case No. D2018-2157
1. The Parties
The Complainant is Merial of Lyon, France, represented by Cabinet Regimbeau, France.
The Respondent is VisaPrint Technologies of Lakeshore, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <rnerial.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2018.
On September 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2019 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.
On September 27, 2018, the Center sent an email communication to the Complainant 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 September 28, 2018.
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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2018.
The Center appointed James Bridgeman as the sole panelist in this matter on November 6, 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 Complainant is a producer of animal health products including pharmaceutical drugs and vaccines and is the owner of a portfolio of trademark registrations including:
- French trademark MERIAL, registration number 96646056, registered on October 10 1996, for goods in classes 5, 9, 10 and 16;
- European Union trademark MERIAL, registration number 000507962, registered on January 19, 1999, for goods in class 5;
- International trademark MERIAL, registration number 672420, registered on March 20, 1997, for goods in classes 5, 9, 10, 16 and 31;
- Canadian trademark MERIAL, registration number 536205, registered on October 31, 2000, for goods in classes 5, 7, 9, 10, 16, 28, 29 and 31.
In addition, the Complainant is the owner of the following Internet domain names which consist of its registered trademark namely <merial.com> registered on April 7, 1998 and <merial.ca> registered on March 29, 2001.
The disputed domain name was created on June 23, 2016; is registered in the name of the Respondents; and resolves to an inactive parking page.
In the absence of any communication from the Respondent, the only information available about the Respondent is that provided in the Complaint, in the Registrar’s response to the Center’s verification request and the WhoIs.
5. Parties’ Contentions
The Complainant is a producer of animal health products including pharmaceutical drugs and vaccines and relies on its claimed rights in the MERIAL trademark and the reputation and goodwill acquired by the extensive use of the MERIAL mark in its international business. Since it was created through a corporate merger in 1997, the Complainant has grown to become established in approximately 150 countries across the world, with 20 R&D sites, 19 industrial sites, and over 10,000 employees.
The Complainant submits that the disputed domain name is confusingly similar to its MERIAL trademark arguing that the substitution of the letter combination “rn” for the letter “m” in the disputed domain name is an example of egregious and deliberate typosquatting. In this regard the Complainant cites the decisions of previous panels in Intersystems Corporation v. Contaxt Privacy Inc. /Maree F Turnr, WIPO Case No. D2017‑1383, and ArcelorMittal SA v. Tina Campbell, WIPO Case No. DCO2018-0005, wherein the panelists found that the domain names <intersysterns.com> and <arcelorrnittal.co> were confusingly similar to the trademarks INTERSYSTEMS and ARCELORMITTAL respectively.
The Complainant furthermore submits that the generic Top-Level domain name extension ”.com” may be ignored for the purpose of comparison.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, asserting that the Respondent is not an authorised dealer, distributor or licensee of the Complainant and has not otherwise been permitted by the Complainant to make any use of MERIAL trademark. The Respondent is not commonly known by the domain name and has no right or reason to use the Complainant’s trademark in business; neither has the Respondent made any demonstrable attempts to use the disputed domain name which resolves to an inactive error page which states: “SORRY! brianfurgason148_vp.webs.com is temporarily unavailable. If you are the site owner, please contact Customer Support.”
Furthermore, the Complainant submits that the Respondent has no prior rights to the MERIAL trademark anywhere in the world and the disputed domain name registration post-dates the registration of the Complainant’s <merial.com> and <merial.ca> domain names.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith submitting that the registrant of the disputed domain name actually knew or at least should have known of the Complainant when the disputed domain name was registered. The Complainant’s rights pre-date the registration of the disputed domain name and the Respondent has a global reputation in about 150 countries including Canada where the Respondent is based.
The Complainant further submits that the registrant’s actual knowledge of the Complainant and its MERIAL mark is also demonstrated by the choice of the disputed domain name that is confusingly similar to the Complainant’s mark and it defies common sense to believe that the disputed domain name was accidentally selected and registered.
The Respondent has no reason to use the disputed domain name except to deceive by diverting Internet surfers who erroneously type the wrong domain name away from the Respondent’s website. The Complainant cites Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cjpcake-Sh9w and Cupcakes-First Patrol, WIPO Case No. D2001-0654, in support of this assertion.
The Complainant also alleges that an email server has been configured on the disputed domain name and submits that there is a risk that the Respondent is engaged in a phishing scheme.
The Complainant requests that the disputed domain name, <rnerial.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of 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 evidence of its ownership of the above-listed registered trademarks adduced by the Complainant has satisfied this Panel that it has rights in the MERIAL trademark.
Having compared both, this Panel finds that the disputed domain name is visually confusingly similar to the Complainant’s MERIAL trademark. In typed script the combination of the letters “r” and “n” as “rn” creates a trompe l’oeil, a visual illusion giving the appearance the letter “m”.
In the circumstances of the present case, the generic Top-Level Domain name extension “.com” can be ignored for the purposes of comparison.
In these circumstances, this Panel finds that the disputed domain name is confusingly similar to the MERIAL trademark in which the Complainant has rights and the Complainant has succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name does not resolve to any active website. There is no evidence that the Respondent is carrying on business or has used the disputed domain name for any noncommercial purposes since it was created on June 23, 2016. Neither is there any evidence that the Respondent is commonly known by the disputed domain name. While the Complainant concedes that it appears that the disputed domain name is being used as an email address by the Respondent, such use does not in itself establish rights or legitimate interests.
In such circumstances where the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent. The Respondent has not filed any Response or made any communication in these proceedings and therefore has failed to discharge this burden.
In these circumstances, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
It is improbable that the registrant was unaware of the Complainant’s rights in the MERIAL trademark and its pre-existing Internet domain names <merial.com> registered on April 7, 1998 and <merial.ca> registered on March 29, 2001 when the disputed domain name was created on June 23, 2016.
The letters “rnerial” appear to have no meaning or significance and in the absence of any context are essentially nonsense. The combination does however in typescript create a visual illusion giving the appearance of the word MERIAL which is the Complainant’s distinctive trademark. On the balance of probabilities this Panel finds that the registrant of the disputed domain name was actually aware of the Complainant’s MERIAL mark and its extensive reputation when the disputed domain name was created and registered the disputed domain name to take predatory advantage of its confusing similarity to the Complainant’s mark.
The Complainant has not adduced any evidence to support its allegation that the disputed domain name is being or has been used for a phishing scheme. This Panel also rejects the Complainant’s submission that the Respondent is endeavoring to create a situation where Internet users might erroneously type the wrong domain name when looking for the Complainant’s website. It is most improbable that anyone would type “r” followed by “n” when intending to type “m”, given the positions of these letters on a keyboard. However, a URL or Internet domain name containing the disputed domain name “rnerial.com” would be easily confused for the letters <merial.com>.
Since it was registered however, the disputed domain name has been passively held and the Respondent is currently permitting the disputed domain name to resolve to an inactive website.
In deciding whether the passive holding of a disputed domain name may result in a finding of bad faith registration and use, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) describes the panelists’ consensus as follows:
“panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, the MERIAL mark is very distinctive and the Complainant has an extensive reputation; the Respondent has failed to submit any response; there is no evidence of any good faith use of the disputed domain name by the Respondent and it is implausible that the disputed domain name was registered for any purpose other than to reference the Complainant and its MERIAL mark.
The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to the remedy requested, namely that the disputed domain name be transferred to the Complainant.
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 <rnerial.com> be transferred to the Complainant.
Date: November 11, 2018