WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Laboratoires Servier v. Shanshan Huang
Case No. D2018-2517
1. The Parties
The Complainant is Les Laboratoires Servier of Suresnes, France, represented by IP Twins S.A.S., France.
The Respondent is Shanshan Huang of Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <servierpharma.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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. In response to the Center’s communication, the Complainant filed an amended Complaint on November 7, 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 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2018.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on December 11, 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 the largest independent French pharmaceutical group and present in 148 countries worldwide. The Complainant is the proprietor of the trademark SERVIER, registered inter alia in the European Union on October 15, 2007 under number 004279171. The Complainant also holds numerous domain names corresponding to the trademark, such as <servier.com> and <laboratoires-servier.com>.
The disputed domain name was registered on April 16, 2018. The disputed domain name is offered for sale for USD 1,000.
5. Parties’ Contentions
A. Complainant
The disputed domain name incorporates the Complainant’s trademark in its entirety combined with the generic term “pharma”. This is not sufficient to remove confusing similarity between the Complainant’s trademark and the disputed domain name.
The Complainant has not authorized or otherwise allowed the Respondent to use its trademark in the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not rights or legitimate interests thereto. In addition, the disputed domain name is offered for sale at USD 1,000, which cannot be seen as bona fide offering of goods or services.
The Complainant’s trademark is originally the surname of the company’s founder, Dr Jacques Servier, and the term “servier” has no specific meaning either in the French language and, to the Complainant’s knowledge, in any other language. Hence it is a fanciful and distinctive term. A reverse WhoIs search has revealed that the Respondent has registered thousands of domain names, among them several domain names containing third-party trademarks.
The Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name. The disputed domain name is offered for sale at USD 1,000 clearly exceeding the out-of-pocket costs for registering a domain name. The Respondent has also been a respondent in at least four earlier UDRP proceedings in which the disputed domain names were ordered to be transferred to the respective complainants.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name includes the Complainant’s trademark in its entirety combined with the term “pharma”, which relates to the Complainant’s business as a pharmaceutical operator. The addition of a term does not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on assessment of the second and third elements (section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the addition of such a term to the Complainant’s trademark does not prevent a finding of confusing similarity under the first element.
Accordingly, the Panel finds that the disputed domain name is confusingly similar with the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of WIPO Overview 3.0).
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant’s trademark in domain names or otherwise. The Complainant has also credibly submitted that the Respondent has no rights or legitimate interests to the disputed domain name.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The Complainant has shown that the disputed domain name has been offered for sale at USD 1,000. This sum clearly exceeds the out-of-pocket costs of registering a domain name. The Complainant has also shown that the Respondent has registered thousands of domain names containing third-party trademarks. The Respondent has not contested this evidence.
The Panel therefore considers that the disputed domain name has been registered primarily for the purpose of selling the domain name to the Complainant for valuable consideration in excess of documented The Panel notes that the Respondent has been involved in 4 previous USRP cases that resulted in the transfer of the concerning domain names (including, Actelion Pharmaceuticals Ltd. v. Shanshan Huang, This domain name is for sale,
WIPO Case No. D2018-1276, regarding the domain name <idorsiapharma.com>). The Panel further considered that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct, which is in violation of Paragraph 4(b)(ii) of the Policy. Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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 <servierpharma.com> be transferred to the Complainant. Tuukka Airaksinen7. Decision
Sole Panelist
Date: December 21, 2018