WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biofarma and Les Laboratoires Servier v. Maria Eliza Edwiges Luz e Silva
Case No. D2019-2687
1. The Parties
The Complainants are Biofarma, France and Les Laboratoires Servier, France, represented by IP Twins S.A.S., France.
The Respondent is Maria Eliza Edwiges Luz e Silva, Brazil.
2. The Domain Name and Registrar
The disputed domain name <dafloncambio.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2019. On November 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 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 Complainants on November 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 6, 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 November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. The Center sent a possible settlement email on November 25, 2019 without any suspension being requested. The Respondent sent several email communications requesting information as well as an extension. In accordance with the Rules, paragraph 5(b), the Respondent was granted the automatic four calendar day extension for response until December 14, 2019. On December 17, 2019, the Respondent sent an email communication to the Center. The Center notified the Commencement of Panel Appointment Process on December 17, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 19, 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 Complainants are two French companies belonging to the French group Servier SAS, which is a leading pharmaceutical group, operating internationally in 149 countries, with over 22,000 employees around the globe, and about 100 million patients daily. Servier SAS acts as president of both of the Complainants, being DAFLON one of their trademarks, which designates a pharmaceutical product that treats symptoms of venous insufficiency, as well as functional signs linked to hemorrhoid episodes.
The Complainants hold registered trademark rights in the mark DAFLON in various jurisdictions, owning a substantial trademark portfolio, of which the following are sufficiently representative for the present proceeding:
Biofarma owns inter alia the following trademark registrations:
European Union Trade Mark No. 010567592 DAFLON, word mark, registered June 15, 2012, in class 5;
United Kingdom Trademark No. 00001021264 DAFLON; word mark, registered November 26, 1973, in class 5;
International Trademark No. 554961 DAFLON, word mark, registered June 8, 1990, in class 5, based on a French trademark registration and designating United States of America, Albania and China;
European Union Trade Mark No. 011853249 DAFLON, word mark, registered November 7, 2016, in classes 5 and 10.
Les Laboratoires Servier owns inter alia the following trademark registrations:
Brazilian Trademark No. 006201202 DAFLON, word mark, registered December 25, 1975, in classes 5 and 13;
Brazilian Trademark No. 840557400 DAFLON, word mark, registered March 1, 2016, in class 3.
The Complainants further own various domain names related to the mark DAFLON, which are linked to their corporate websites in connection with their products and services. The Complainant Biofarma and its subsidiaries own, among others, “daflon.fr” registered on November 27, 2001, “daflon-online.com” registered on May 16, 2014, “daflon.com” registered on December 4, 1996 as well as “daflon.shop” registered on September 26, 2016. The Complainant Les Laboratoires Servier and its subsidiaries own, among others, “daflon1000.com.br” registered on April 15, 2014 as well as “daflon500.com.br”registered on March 4, 1998.
The disputed domain name was registered on May 21, 2019, and it is inactive resolving to a page with an Internet browser error message.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The Complainants’ trademark DAFLON has acquired considerable reputation and goodwill in many jurisdictions worldwide, including Brazil (where the Respondent is located as indicated in the disputed domain name registration). The Complainants’ products identified by the trademark DAFLON have been available online at the Complainants’ website linked to “daflon.fr” at least since 2015.
The disputed domain name is confusingly similar to the trademark DAFLON. The disputed domain name incorporates the Complainants’ trademark DAFLON, adding the word “cambio”, which is a Portuguese word (câmbio) equivalent to “exchange” in English language, being the term “daflon” its only distinctive element. Adding a descriptive term to the mark incorporated to the disputed domain name does not evade the finding of confusing similarity, and the generic Top Level Domain (“gTLD”) “.com” is not relevant in the assessment of the first element due to its technical character.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name “daflon”. Searches in Google for the terms “daflon”, “daflon cambio” and “daflon câmbio” reveal that the top results refer to the Complainants and their trademark DAFLON. Trademark searches in the WIPO and the INPI (Instituto Nacional da Propiedade Industrial of Brazil) databases for trademarks containing the term “daflon”, reveal only the Complainants’ trademarks. Therefore, to the best of the Complainants knowledge, the Respondent does not hold any trademark rights on the word “daflon”. Further, the disputed domain name is inactive redirecting to an error page and the Respondent is not linked to the Complainants, not having been granted any authorization, license or any other right to use the Complainants’ trademark.
The Respondent has registered and is using the disputed domain name in bad faith. The reputation of the Servier Group as well as the intensive use of DAFLON trademark makes it unlikely that the Respondent ignored the Complainants’ trademark rights at the time of the disputed domain name registration. Particularly, when the Complainants’ group is established in Brazil for more than 50 years, its Brazilian subsidiary (Servier Do Brazil) is located in the same location of the Respondent (Rio de Janeiro, as indicated in the disputed domain name registration), and has its own website accessible at “servier.com.br”. The trademark DAFLON is continued and extensively used in Brazil. Several examples of packages, prospects articles related to the Complainants’ products in medical publications, and excerpts from the Complainants’ group corporate website are attached to the Complaint.
The Complainant Biofarma sent a cease and desist letter to the Respondent through the Registrar abuse email address, but the Respondent did not reply to this communication. The absence of reply as well as the absence of any active use of the disputed domain name corroborate the Respondent’s bad faith.
The Complainants have cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that they consider supportive of their position.
The Complainants request the transfer of the disputed domain name to the Complainant Biofarma.
The Respondent did not reply to the Complainants’ contentions.
However, the Respondent sent several email communications to the Center, in Portuguese, apologizing for replying out of time due to Internet problems, and giving the following explanations:
The disputed domain name was registered in connection to a currency exchange business, operating in Rio de Janeiro’s financial market, which has no intention to expand, and the disputed domain name was chosen because “daflon” is the surname of the mother of one of its partners. There was no intention to harm the Complainants or its group.
The Respondent provided no evidence in support of the above-mentioned allegations, and requested to be able to continue using the disputed domain name as an email address.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainants have made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Multiple Complainants filing against a single Respondent
Under the general powers of the Panel articulated in paragraph 10(e) of the Rules, this Panel admits the Complaint filed by two Complainants against a single Respondent. The Panel considers that the Complainants have a common grievance against the Respondent, being affected both of them by the Respondent’s registration and use of the disputed domain name, as both of them hold rights in the trademark DAFLON. The Panel further considers equitable and procedurally efficient to permit the consolidation. See section 4.11.1 of the WIPO Overview 3.0.
B. Supplemental Filing of the Respondent
The Respondent was granted an extension to file a Response to the Complainants’ contentions, sending a communication to the Center after the extended deadline.
Under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Rules, the Panel is vested with authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, being at its sole discretion to request any further statements or evidence. See section 4.6 of the WIPO Overview 3.0.
The Panel considers that the Respondent has not sufficiently justify why she was unable to file the Response in due time. Further, the Respondent has sent a simple email communication with no evidence or documentation corroborating her allegations and in a language different to the proceeding language.
The above-mentioned circumstances lead the Panel to consider that the Respondent’s communication should not be admitted as a Response, albeit for the sake of completeness the Panel may take into consideration the information contained in the Respondent’s email in the assessment of the case, as any other evidence included in the file, if the Panel considers it may be helpful to decide the case.
C. Identical or Confusingly Similar
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of the WIPO Overview 3.0.
Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, of the WIPO Overview 3.0.
The Complainants indisputably have rights in the registered trademark DAFLON. The disputed domain name incorporates this mark in its entirety adding the term “cambio” as a suffix, which is a Spanish or a Portuguese word (“câmbio”), equivalent to “change, exchange, shift, modification or alteration” in English language. The Complainant’s trademark DAFLON is directly recognizable in the disputed domain name, and the gTLD “.com” is being a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
D. Rights or Legitimate Interests
Although the Complainants bear the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainants have asserted that the Respondent is not commonly known by the name “daflon” not owning any trademark for this term, and not being a licensee or being otherwise authorized to use the mark DAFLON. Further, the Complainants have alleged that there is no evidence that the Respondent made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose.
This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainants’ prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
The Respondent supplemental filing or extemporal communication indicated that the disputed domain name was registered in connection to a currency exchange business operating in Rio de Janeiro’s financial market, choosing the term “daflon” because it is the surname of the mother of one of its partners. However, the Respondent provided no documentation related to these allegations or to any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Panel has verified that, as the evidence provided by the Complainants shows, the Respondent’s alleged currency exchange business does not appears on the Internet browsers, not finding any evidence that may corroborate the Respondent’s allegations.
The Panel has further verified that, as the evidence provided by the Complainants shows, the disputed domain name is inactive resolving to a page with an Internet browser error message.
It is to be noted that, the Respondent has alleged that she or her business is commonly known by the disputed domain name (“daflon cambio” or “daflon câmbio") having chosen this name because “daflon” is the surname of the mother of one of this business’ partners. The Panel has verified that “daflon” is a French surname. However, with reference to paragraph 4(c)(ii) of the Policy, the Respondent must be “commonly known” (as opposed to merely incidentally being known), not being necessary for the Respondent to have acquired corresponding trademark rights, but mere assertions are not sufficient. The Respondent is expected to produce concrete credible evidence regarding this circumstance. See section 2.3 of the WIPO Overview 3.0.
The Panel further notes the extensive presence of the trademark DAFLON over the Internet, as well as the extensive use of this mark in many jurisdictions worldwide including Brazil, where the Respondent is located according to the disputed domain name registration and her email communication. According to the information and evidence provided in the Complaint, the Complainants’ subsidiary in Brazil operates for more than 50 years, being located in the same city as the Respondent and accessible at “servier.com.br”. Further, the trademark DAFLON is continued and extensively used in this country.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all these cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
E. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainants establish that the disputed domain name “has been registered and is being used in bad faith.”
At the time of the registration of the disputed domain name, this Panel considers it unlikely that the Respondent did not know about the DAFLON mark. Several factors in this case lead to this conclusion. Particularly, the high presence of this mark over the Internet and its extensive use in Brazil where the Respondent is located.
The Panel notes the extensive presence of the trademark DAFLON over the Internet, as well as its extensive use and promotion in many jurisdictions worldwide, including Brazil, where the Respondent is located (according to the information provided in the disputed domain name’s registration and the Respondent’s communication). The Complainants’ trademark is used and registered in many jurisdictions worldwide, being considered notorious in the pharmaceutical sector.
The Panel further notes the reaction of the Respondent to the notification of the Complaint, not providing any evidence supporting any rights or legitimate interests in the disputed domain name.
It is further remarkable that the disputed domain name is inactive resolving to a page with an Internet browser error message, and the Respondent used a privacy proxy service in the registration of the disputed domain name.
The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain names 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Taking into account all cumulative circumstances of this case, the Panel considers that on the balance of probabilities the Respondent was targeting the Complainants’ trademark with the disputed domain name.
All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainants have met their burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under 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 <dafloncambio.com> be transferred to the Complainant Biofarma.
Reyes Campello Estebaranz
Date: January 2, 2020