WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coloplast A/S v. Contact Privacy Inc. Customer 1242178062 / Hillary Washington
Case No. D2018-2372
1. The Parties
The Complainant is Coloplast A/S of Humlebaek, Denmark, represented internally.
The Respondent is Contact Privacy Inc. Customer 1242178062 of Toronto, Ontario, Canada / Hillary Washington, Coloplast of Los Angeles, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <coloplast.consulting> is registered with Google Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 19, 2018, the Registrar transmitted by email to the Center its verification response:
(a) it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the Respondent registered the disputed domain name on January 23, 2018;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on October 29, 2018 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 November 16, 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 November 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 9, 2019. 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
According to the Complaint (and its annexes), the Complainant has been producing and distributing medical devices in the fields of ostomy care, urology, and continence care for over 60 years under or by reference to the trademark COLOPLAST. It conducts its operations under this trademark in many countries through subsidiaries incorporated for that purpose. Amongst other things, it promotes its products and services by reference to “Coloplast” from websites associated with the domain names <coloplast.com> and numerous others registered in country code Top-Level Domains (“ccTLDs”), such as <coloplast.de>, <coloplast.co.uk>, <coloplast.com.au>, and <coloplast.cn>.
The Complainant is the owner of an International Registration for the trademark COLOPLAST, Registration No. 883011, which was registered on May 26, 2005 in respect of relevant goods in International Classes 3, 5 and 10. This trademark designates numerous countries.
In the United States, the Complainant owns at least United States Registered Trademark Nos 1,603,298 and 1,303,362, both for COLOPLAST. Trademark No. 1,303,362 was registered on November 6, 1984 and is registered in respect of relevant goods in International Classes 3, 5, and 10; Trademark No. 1,603,298 includes also a figurative element of a circle with stripes. It was registered on June 26, 1990 in respect of relevant goods in International Classes 3, 5, and 10.
The disputed domain name was registered on January 23, 2018. So far as the record shows, the disputed domain name has not resolved to any active website. No records have been retrieved for any website at the disputed domain name by the Wayback Machine.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record as confirmed by the Registrar in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or her case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 inquiry into this requirement of the Policy simply requires a visual and aural comparison of the disputed domain name to the Complainant’s proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD, “.consulting”, the disputed domain name is identical to the Complainant’s proven trademark including, in particular, United States Trademark No. 1,303,362 and, consistently with WIPO Overview 3.0 section 1.10, confusingly similar to United States Trademark No. 1,603,298.
Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and the evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The disputed domain name does not appear to be in use.
Bearing in mind the longstanding usage of the trademark COLOPLAST by the Complainant and the apparently coined or invented nature of the trademark, all of these considerations together are sufficient to raise a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name.
Although on notice of the Complainant’s allegations, the Respondent has not sought to rebut that prima facie case nor to claim that he or she is using the disputed domain name in some way other than through a website or is otherwise engaged in preparations to use it in some good faith way.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As already indicated, it appears that the Complainant’s trademark is a coined or invented term. So far as the information available in this administrative proceeding shows, the Complainant’s trademark has significance only as the Complainant’s trademark. Further, it has been in use for many years – over 60 years according to the Complainant – in many countries including, it appears, for more than at least 35 years as a trademark registered in the United States.
Having regard to that long and extensive use and the distinctive nature of the trademark, the Panel infers that the Respondent registered the disputed domain name to take advantage of its trademark significance. If the Respondent had some other motivation or justification, he or she has not taken the opportunity to advance it. On the record in this case, the Respondent has sought to take advantage of the Complainant’s trademark without permission from the Complainant or other entitlement. Such conduct is the essence of registration in bad faith. The passive holding of the disputed domain name, registered in such circumstances, is also use in bad faith under the Policy: see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Accordingly, in the absence of explanation or defence from the Respondent, the Panel finds that the Complainant has established the third requirement under 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 <coloplast.consulting> be transferred to the Complainant.
Warwick A. Rothnie
Date: January 22, 2019