WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coloplast A/S v. DomainsByProxy.com / Yang Liu
Case No. D2019-0134
1. The Parties
The Complainant is Coloplast A/S of Humlebaek, Denmark, represented internally.
The Respondent is DomainsByProxy.com of Scottsdale, Arizona, United States of America (“United States”) / Yang Liu of Copley, Ohio, United States.
2. The Domain Names and Registrar
The disputed domain names <coloplast-america.com>, <coloplastamerica.com>, <coloplast-usa.com>, and <coloplastusa.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 22, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 23, 2019, 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 January 24, 2019.
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 January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2019.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on February 25, 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
The Complainant is a Danish corporation doing business worldwide in relation to medical devices in the areas of ostomy care, urology and continence care, and wound and skin care.
“Colopast” is a coined term which has been used by the Complainant for more than 60 years. The Complainant is the owner of the COLOPLAST international trademark number 0929298 with designations under the Madrid Protocol in Australia, China, European Community, Japan, Norway, Switzerland, and United States, with registration date of May 16, 2007.
The disputed domain names were registered on October 14, 2018.
The Complainant contacted the Respondent on October 30, 2018 and received no answer. The disputed domain names resolve to parking pages hosted by the Registrar.
5. Parties’ Contentions
The Complainant asserts that its trademark and company name are fully contained within the disputed domain names.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. COLOPLAST is the Complainant’s registered company name and trademark.
The Respondent has not responded to the Cease & Desist letter sent on October 30, 2018, which is considered as bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its COLOPLAST trademark registrations in numerous jurisdictions, including the United States. The Complainant’s mark COLOPLAST is utterly reproduced and recognizable in the disputed domain names <coloplast-america.com>, <coloplastamerica.com>, <coloplast‑usa.com>, and <coloplastusa.com>. The addition of the geographical term “america” or “usa” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Further, it is well established in decisions under the UDRP that generic Top-Level Domains (“gTLDs”) are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Therefore, the disputed domain names are confusingly similar to the COLOPLAST trademark. Thus, the first requirement is met under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The case file allows the Panel to infer that the Respondent is not affiliated with the Complainant or otherwise authorized to use its COLOPLAST trademark. Nor does the Respondent appear to hold trademark rights related to COLOPLAST or the disputed domain names. Further, from the available WhoIs records, it would seem that the Respondent is not commonly known by the disputed domain names. Under these circumstances, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain names.
According to WIPO Overview 3.0, section 2.1.: “[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” However, the Respondent did not file a Response to the Complaint. Thus, the Respondent did not come forward with such appropriate allegation or evidence before the Panel.
Moreover, the Panel finds that the composition of the disputed domain names is such that they effectively impersonate or suggest sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
The Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain names to the satisfaction of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
It is apparent to the Panel that “Coloplast” is a coined or invented term (see Coloplast A/S v. Contact Privacy Inc. Customer 1242178062 / Hillary Washington, WIPO Case No. D2018-2372). In fact, as the Panel has had the opportunity to check from a Google search, the mark COLOPLAST appears to have meaning only in relation to the Complainant and its services. The Panel also notes that according to the Complainant, COLOPLAST has been in use for over 60 years in many jurisdictions. Under these circumstances, the Panel finds that the registration of the disputed domain names gives rise to an attempt to target the Complainant and its trademark. Accordingly, it seems more likely than not that the Respondent knew of the Complainant and its business when it registered the disputed domain names.
Previous UDRP decisions have noted that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of “passive holding”. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In such a situation it is appropriate to look at the totally of the circumstances of the case. Here, the facts alleged in the Complaint, the lack of the Respondent’s rights or legitimate interests, and the lack of response from the Respondent to the Complainant's cease-and-desist letter support a finding of bad faith use and registration.
Consequently, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <coloplast-america.com>, <coloplastamerica.com>, <coloplast‑usa.com>, and <coloplastusa.com> be transferred to the Complainant.
Date: March 15, 2019