WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Laboratoires Servier v. Registration Private, Domains By Proxy, LLC / Dylan Dylan Kaufuan
Case No. D2019-1916
1. The Parties
The Complainant is Les Laboratoires Servier, France, represented by IP Twins SAS, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (the “United States”) / Dylan Dylan Kaufuan, United States.
2. The Domain Name and Registrar
The disputed domain name <eservier.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 8, 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 August 9, 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 August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2019.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 17, 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 French pharmaceutical group specialized in the treatment of cardiovascular disease, diabetes, cancer, neuropsychiatric diseases, and immune-inflammatory diseases.
The Complainant operates under the brand SERVIER, which was registered as a trademark in numerous countries (e.g. the European Union trademark No. 004279171, registered on October 15, 2007; and the International Trademarks Nos. 814214, 571972 and 549079, registered respectively August 8, 2003, May 29, 1991, and January 19, 1990).
The Complainant is also the owner of numerous domain names incorporating its SERVIER trademark, both within gTLDs and ccTLDs, such as <servier.com>, <servier.fr>, <laboratoires-servier.com> and <servier.us>.
The Respondent registered the disputed domain name <eservier.com> on April 10, 2019.
The Panel accessed the disputed domain name on September 27, 2019, at which time the disputed domain name did not resolve to any active website.
5. Parties’ Contentions
The Complainant makes the following contentions:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The trademark SERVIER is a well-known trademark worldwide, as previously stated by UDRP panels, such as in Les Laboratoires Servier v. Ping Chen, Chen Ping, WIPO Case No. D2016-2252. The disputed domain name is highly similar to the SERVIER trademark and likely to create confusion in the mind of the general public. Indeed, the SERVIER trademark is reproduced entirely within the disputed domain name. Several panel decisions have held that when a domain name wholly incorporates a complainant’s registered mark, this is sufficient to establish identity or confusing similarity for the purposes of the Policy. The disputed domain name merely adds the letter “e” before the word “servier”. The addition of the letter “e” does not diminish the risk of confusion with the Complainant’s trademark. Indeed, the addition of “e” in front of other words is commonly used for designating services existing on the Internet: email, ecommerce, ebusiness, etc. Therefore, “eservier” would suggest online services provided or endorsed by the Complainant. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is typically permissible to ignore the generic Top-Level Domain (“gTLD”) and the gTLD “.com” does not minimize the confusing similarity. Finally, it should be noted that the disputed domain name is particularly similar to some of the Complainant’s domain names, namely <iservier.com>, <iservier.fr>, <iservier.net>, <iservier.org>, <eserviergroup.com>, <eserviergroup.net> and <eservier.net>.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights related to the “servier” term. A worldwide trademark search failed to reveal any SERVIER trademarks other than those in the name of the Complainant or its affiliates. The Complainant also performed a search on the Respondent surname as holder and found no trademarks at all. The Respondent cannot therefore claim to have trademark rights over the word “servier”. Secondly, the Respondent reproduces the Complainant’s trademark without any license or authorization from the Complainant’s company, which is a strong evidence of the lack of legitimate interest. Thirdly, the Respondent’s use of the disputed domain name or preparation to use the disputed domain name demonstrates no connection with a bona fide offering of goods or services. On the contrary, the disputed domain name currently does not resolve to an active website. Fourthly, the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s SERVIER trademarks. Moreover, the Respondent is not commercially linked to the Complainant. Fifthly, since the adoption and extensive use by the Complainant of the trademark SERVIER predates the first entry of the disputed domain name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests the Respondent may have or have had in the disputed domain name. None of the circumstances which set out how a respondent can prove his rights or legitimate interests are present in this case. Given that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of proof shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Firstly, the Complainant states that the SERVIER trademarks are so well-known that it is inconceivable that the Respondent ignored the Complainant’s earlier rights on the term “servier”. It is clear that the Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name. The Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant’s trademark. Indeed, a simple search on an online search engine yields results only related to the Complainant. "Servier" is the surname of the founder of the Complainant and an arbitrary, distinctive term. The combination of the distinctiveness of the Complainant’s trademark and its extensive use across the world makes it highly unlikely that the Respondent did not know about the Complainant before the registration of the disputed domain name. Secondly, the Complainant sees no possible way whatsoever that the Respondent would use the disputed domain name in connection with a bona fide offer of products or services. Indeed, any use of the SERVIER trademark would amount to trademark infringement and damage to the reputation of the trademark. The sole detention of the disputed domain name by the Respondent, in an attempt to prevent the Complainant from reflecting its trademark and company name in the a domain name, is a strong evidence of bad faith. The concept of a domain name “being used in bad faith” is not limited to positive action. The Complainant sent a cease-and-desist letter and several reminders to the Respondent, through the email address available on the disputed domain name public WHOIS. The Complainant did not receive any answer. The use of a proxy service by the Respondent, the massive use and reputation of the SERVIER trademarks, the resulting implausibility of any good-faith use of the disputed domain name by the Respondent, as well as its failure to answer to the letters sent by the Complainant, should qualify as a bad-faith use of the disputed domain under the doctrine of passive holding. Fourthly, the Respondent indicates <[...]@mainservier.com> as its email address on the WHOIS database. The domain name <mainservier.com> has been subject to a previous UDRP Complaint, which was settled after the Registrar had indicated that the said domain name was canceled by their fraud team. This circumstance enhances the characterization of bad faith in the present case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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.
A. Identical or Confusingly Similar
The Panel has no doubt that “servier” is a term directly connected with the Complainant’s pharmaceutical activities.
Annex 6 to the Complaint shows numerous trademark registrations for SERVIER in numerous countries as early as 1990.
The trademark SERVIER is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark SERVIER merely by the addition of the preffix “e” (which usually corresponds to the acronym of “electronic”, or is used to indicate online services/products), as well as the gTLD extension “.com”.
Previous UDRP decisions have repeatedly found that the mere addition of generic terms to a trademark in a domain name does not avoid a finding of confusing similarity (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; and The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050).
It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence presented by the Complainant, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. The Respondent has not either indicated any reason to justify why it has chosen the specific term “eservier” to compose the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in April 2019), the trademark SERVIER was already widely known and directly connected to the Complainant’s pharmaceutical services.
The disputed domain name encompasses the trademark SERVIER in its entirety. The addition of the letter “e” enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to the online branch of the Complainant.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith.
The Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the disputed domain name <eservier.com> was a mere coincidence.
In the Panel’s view, the fact that the Respondent (a) adopted a trademark to compose the disputed domain name; (b) is not currently using the disputed domain name; and (c) has not provided any justification for the registration of such third-party trademark, is enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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, <eservier.com>, be transferred to the Complainant.
Date: October 1, 2019