WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferring BV v. Name Redacted
Case No. D2019-0559
1. The Parties
The Complainant is Ferring BV of Hoofddorp, Netherlands, represented by AARPI Scan Avocats, France.
The Respondent is Name Redacted1 .
2. The Domain Name and Registrar
The disputed domain name <es-ferring.com> (the “Disputed Domain Name”) is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 15, 2019, 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 March 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2019.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 16, 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 part of a major Swiss pharmaceutical group specializing in pharmaceutical products, notably those involving reproductive medicine and women’s health, and in specialty areas in gastroenterology, urology, endocrinology and orthopedics. The Complainant is a research-driven, specialty biopharmaceutical group committed to helping people become parents and keeping mothers and babies healthy from conception to birth. Established in 1950, the Complainant has developed a strong international profile, with nearly 60 local marketing and sales companies worldwide and distribution in 110 countries.
The Complainant is the registered owner of a large number of trademarks consisting of or including the word “ferring” in, among other countries worldwide, Switzerland, France, Spain, Argentina, the United States of America, and the European Union, including the European Union trademark FERRING, with filing number 004030193 registered on September 11, 2006 (hereinafter collectively referred to as the “FERRING Mark”).
The Complainant is also the owner of numerous domain names, including <ferring.com>, <ferring.fr>, <ferring.net>, <ferring.eu>, <ferring.es> and <ferring.co>.
The Disputed Domain Name was registered by the Respondent on March 6, 2019. The Disputed Domain Name resolves to a page that states: “ Sorry. . . . www.es-ferring.com could not be found . . . . It may be unavailable or may not exist.”
5. Parties’ Contentions
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith as part of a scheme in which the Respondent impersonated the Complainant’s executive to place an order for airline tickets from the Complainant’s travel agency.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the FERRING Mark.
First, it is uncontroverted that the Complainant has established rights in the FERRING Mark based on its continuous use as well as its numerous trademark registrations for the FERRING Mark worldwide.
The Disputed Domain Name <es-ferring.com> consists of the abbreviation for the country code for Spain, “es”, separated by a hyphen from the word “ferring”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
Although the Disputed Domain Name <es-ferring.com> contains a hyphen between the Spain country code “es” and the word “ferring”, this is irrelevant for purposes of the Policy, because the presence or absence of a punctuation mark such as a hyphen cannot on its own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest it is related to a trademark or trade name in which the Respondent has rights.
The Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a fraud on an unwitting travel agency in Peru that the Complainant has patronized in the past. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”, WIPO Overview 3.0, section 2.13.1.
The Respondent is using the Disputed Domain Name for impersonation and phishing, and thus, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, as demonstrated above, the Respondent is using the Disputed Domain Name <es-ferring.com> to perpetrate an impersonation scheme aimed at defrauding an unwitting travel agency with a falsely created request via email for airline tickets. “As noted in section 2.13.1 [of WIPO Overview 3.0], given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.”, WIPO Overview 3.0, section 3.1.4.
“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution … Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”, WIPO Overview 3.0, section 3.4.
In this case, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Name. The falsified WhoIs information for the Disputed Domain Name further supports a finding that the Respondent registered the Disputed Domain Name in bad faith.
Finally, the Respondent’s registration of the Disputed Domain Name that is confusingly similar to the FERRING Mark, only including the country code for Spain, “es”, connected to the “ferring” mark by a hyphen is further evidence of bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by 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, <es-ferring.com> be transferred to the Complainant.
Lynda M. Braun
Date: April 17, 2019
1 The Panel decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 (“The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published except under exceptional circumstances”).