WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferring BV v. Lisa, Ferring Private Ltd.
Case No. D2019-0636
1. The Parties
The Complainant is Ferring BV of Netherlands, represented by Scan Avocats, France.
The Respondent is Lisa, Ferring Private Ltd., Singapore.
2. The Domain Name and Registrar
The disputed domain name <ferringpharma.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 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 April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. In reply to the Notification of Complaint, emails were received on April 4, and April 17, 2019 from what appears to be the “reseller or domain booking provider”. On April 16, 2019 an email was received from Ferring Pte Ltd, (in reply to the Written Notice). In the email, a request was made for a copy of the Complaint and for an extension of time to file a response. The Center forwarded the Complaint and Notification of Complaint and further granted the automatic four-calendar day extension for response under paragraph 5(b) of the Rules. As such, the new due date for any Response was April 25, 2019.
The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the Commencement of the panel appointment process May 7, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 13, 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 Swiss pharmaceutical group. It is the owner, amongst others, of the following trademark registrations (Annexes 8.1-8.6 to the Complaint):
- European Union Trademark registration No. 004030193 for FERRING, in classes 5 and 10, registered on September 11, 2006; and
- International Trademark registration No. 1275686 for FERRING PHARMACEUTICALS, in classes 5, 10, 42 and 44, registered on September 24, 2015.
The disputed domain name <ferringpharma.com> was registered on March 13, 2019. While the disputed domain name does not resolve to an active website, it appears to have been used in connection with a fraudulent email scheme.
5. Parties’ Contentions
The Complainant asserts to be a leading biopharmaceutical group, originally established in Sweden and presently headquartered in Switzerland but with an international presence in 56 countries and distribution in 110 countries. Employing around 7,000 people, it had annual sale of nearly CHF 2,3 billion in 2017.
According to the Complainant, the FERRING trademark has become a global well-known trademark, what has already been recognized in past UDRP decisions (Ferring B.B. v. Simon David, WIPO Case No. DME2012-0007).
Under the Complainant’s view, the disputed domain name incorporates the entirety of its well-known trademark with the addition of the generic term “pharma”, which in the context of the fraudulent activities carried out by the Respondent can be understood as a prefix for “pharmaceuticals” and only enhances the likelihood of confusion with the Complainant and its pharmaceutical business.
Also according to the Complainant, the disputed domain name has been used to create the email address <[…]firstname.lastname@example.org> which was used to send emails to the Complainant’s staff, impersonating the Complainant, what constitutes a clear violation of the Complainant’s trademark rights.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has no relationship with the Complainant, not being in any way related to it and not carrying out any activity or having any business with it;
(ii) the Respondent is not and has never been known under the name “Ferring”;
(iii) the Complainant has never given any authorization or permission whatsoever to the Respondent to register or use the disputed domain name; and
(iv) the Respondent is using the disputed domain name to impersonate the Complainant.
The Complainant contends, as to the bad faith in the registration and use of the disputed domain name that it arises from the fact that the disputed domain name has been used by the Respondent in connection with a fraudulent scheme whereby the Respondent is impersonating the Complainant, also having displayed at the disputed domain name a reproduction of the Complainant’s webpage, seeking to use it to a probable phishing attack against the Complainant (Annex 14 to the Complaint).
In view of the aforementioned, the Complainant asserts that the intention of the Respondent to create a false association with it with the purpose of taking advantage of the Complainant’s reputation is clear in view of the email addresses created and used to send emails misleading recipients into believing that the emails came from the Complainant where in fact they did not.
Two emails were received on April 4 and 17, 2019, the person identified itself as the reseller or domain booking provider stating: “I only provide domain booking after that owner of the domain can do anything he want to do with his domain. After geting this mail i try to contect with the owner but not abale to contect resistered person / didnt got any responce from owner side. I m not owner of this domain. So u can take any action against this domain like delete/block any thing you want to do. I m always redy to cooprate with you.
The email of April 17, 2019, reiterated the above statement.
While the Respondent requested an extention to file a response on April 16, 2019, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the FERRING trademark duly registered.
The disputed domain name reproduces in its entirety the Complainant’s trademark with the addition of the generic term “pharma”.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has never given any authorization or permission whatsoever to the Respondent to register or use the disputed domain name; not being the Respondent in any way related to it and not carrying out any activity or having any business with it.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
According to the Complainant the Respondent has used the disputed domain name in a manner to impersonate inappropriately the Complainant and sought to use it to a probable phishing attack against the Complainant (Annex 14 to the Complaint), what does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
The Respondent’s knowledge of the Complainant appears to be evident both from the choice of the disputed domain name adding the term “pharma” to the well-known FERRING trademark given the Complainant’s activities in the biopharmaceutical business as well as from the fraudulent emails scheme perpetrated by the Respondent.
In this case, the use of the disputed domain name in connection with fraudulent emails impersonating the Complainant can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant’s trademark.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, the Respondent’s use of what appears to be false contact information in the WhoIs information further support in the circumstances of this case the Panel’s finding of bad faith.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of 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 <ferringpharma.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: May 27, 2019