WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ferring BV v. Contact Privacy Inc. Customer 1244230522 / Ferring Pharmaceuticals Inc
Case No. D2019-0974
1. The Parties
The Complainant is Ferring BV, Netherlands, represented by AARPI Scan Avocats, France.
The Respondent is Contact Privacy Inc. Customer 1244230522, Canada / Ferring Pharmaceuticals Inc., United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <ferring-pharma.com> (the “Domain Name”) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2019, identifying the Respondent as Contact Privacy Inc. Customer 1244230522. The Center sent its request for registrar verification to the Registrar the same day. The Registrar replied the same day, identifying the registrant of the Domain Name as Ferring Pharmaceuticals Inc and providing the contact details held on its WhoIs database. The Registrar also confirmed that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the Domain Name, that the Domain Name was registered by the current registrant on March 28, 2019 and will expire on March 28, 2020, that a lock had been applied to the Domain Name and will remain in place during this proceeding, and that the language of the registration agreement is English.
By email of May 1, 2019, the Center invited the Complainant to amend the Complaint to reflect the registrant information provided by the Registrar. The Complainant filed an amended Complaint on May 3, 2019, identifying the Respondent as Ferring Pharmaceuticals Inc.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 3, 2019. In accordance with paragraph 5 of the Rules, the due date for Response was May 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2019.
The Center appointed Jonathan Turner as the sole panelist in this matter on May 28, 2019. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant’s group is a developer, manufacturer and supplier of pharmaceuticals, specializing in products based on natural, pituitary-produced peptide hormones. It is a leader in the fields of reproductive medicine and women’s health, as well as in speciality areas of gastroenterology, urology, endocrinology and orthopaedics. The business was started in Malmoe, Sweden, but the headquarters are now in Switzerland. At the end of 2017, the business had around 7 000 employees worldwide and annual sales of nearly CHF 2.3 billion.
The business has operated under the mark FERRING and the Complainant is the proprietor of marks registered for FERRING in Canada (No. 346856, filed June 13, 1985), the European Union (No. 4030193, filed September 16, 2004), India (No. M3695064, filed December 12, 2017) and Switzerland (No. 527390, filed April 3, 1990), as well as an International mark (No. 1275686) registered for a logo consisting of a presentation of the words “ferring” and “pharmaceuticals” filed on September 24, 2015, with effect in Singapore, India, New Zealand, Japan, the EU and Vietnam, and various other marks containing the word “ferring”.
The Complainant has also registered a number of domain names containing the word “ferring” that are used to promote the group’s business.
The Domain Name was directed to the website of the Complainant’s affiliates in the USA at “www.ferringusa.com” until this was stopped following objections made to the Registrar by the Complainant’s representative. The Domain Name does not currently locate any web page.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its FERRING marks. The Complainant points out that the generic Top-Level Domain (“gTLD”) suffix “.com” has no distinguishing effect and should be ignored. The Complainant adds that the term “pharma” refers to the core business of the Complainant’s group and is thus unable to dispel the likelihood of confusion.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent has no relation to its business, is not one of its distributors, does not carry out any activity for it, does not conduct business with it and is not authorized to use the Domain Name. The Complainant maintains that the Respondent has not used the Domain Name for any bona fide offering of goods or services, or made any preparations for such use, or used the Domain Name for any other legitimate purpose. The Complainant alleges that the Respondent is not known by the name “Ferring” and that the Respondent’s registration of the Domain Name using the name “Ferring Pharmaceuticals Inc”, which is the name of one of the Complainant’s affiliates in the USA, is a further deceptive act.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant asserts that in view of the reputation of the Complainant’s group as a pharmaceutical business operating under the mark FERRING, the Respondent must have registered the Domain Name to target the Complainant’s group, and that this conclusion is further confirmed by the Respondent’s directing the Domain Name to the website of the Complainant’s affiliates in the USA.
The Complainant alleges that the Respondent registered the Domain Name to support illegal activity including bogus emails to staff of its group inducing them to carry out instructions. The Complainant adds that the lack of any direction of the Domain Name to an active website after its direction to the website of the Complainant’s affiliates was stopped is further evidence of the lack of any bona fide purpose on the part of the Respondent.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s failure to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the word mark FERRING and in the logo FERRING PHARMACEUTICALS. The Panel further finds that the Domain Name is confusingly similar to both marks. The inclusion of “pharma” in the Domain Name does not avoid confusion but, rather, reaffirms it, since it identifies the very business in which the mark FERRING identifies the Complainant and none other. As repeatedly held by UDRP panels, the gTLD suffix does not provide any distinction. The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds on the undisputed evidence that the Respondent has not used the Domain Name or any corresponding name for a bona fide offering of goods or services, nor made any preparations for such use, nor is commonly known by the Domain Name or any corresponding name, nor made any legitimate non-commercial or fair use of the Domain Name, and nor has the Respondent been authorized by the Complainant to use the Domain Name.
The Panel is satisfied by the evidence that there is no other basis on which the Respondent could claim any rights or legitimate interests. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered for the purpose of targeting the Complainant in some way. There is no other plausible explanation for the coupling of the mark FERRING and the term “pharma” given the Complainant’s reputation in the pharmaceutical field, and for the direction of the Domain Name to the website of the Complainant’s affiliates in the USA.
The Respondent’s precise purpose is not clear, but it is reasonable to infer a bad faith purpose from the matters mentioned above, and that inference has not been rebutted by any explanation or any denial of the Complainant’s allegations. In these circumstances the Panel finds on the balance of probabilities that the Domain Name was registered and is being used in bad faith.
All three substantive requirements of the UDRP are therefore satisfied and it is appropriate to direct that the Domain Name be transferred to 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 Domain Name <ferring-pharma.com> be transferred to the Complainant.
Date: June 6, 2019