WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Omega Pharma Innovation & Development NV v. Kyoung S Park
Case No. D2020-0849
1. The Parties
The Complainant is Omega Pharma Innovation & Development NV, Belgium, internally represented.
The Respondent is Kyoung S Park, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <xls-medical.com> (the “Disputed Domain Name”) is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2020. On April 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 15, 2020. 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 pharmaceutical company specialized in the research, development, and marketing of a wide variety of self-care and related health products. It is part of the Perrigo group of companies, one of Europe’s leading companies to market over-the-counter pharmaceutical goods, as well as general self-care and day to day hygienic products.
One of the Complainant’s most successful products throughout European markets is “XLS Medical”, a weight loss and weight management pharmaceutical. XLS Medical comes in different forms, doses and shapes, including a fat binder, a carb blocker, or an appetite reducer.
The Complainant is the owner of the following trademarks, among others:
XLS MEDICAL, Trademark Reg. No. M2902924, filed on November 27, 2009 and registered on February 23, 2010, in Spain, in International class 5; XLS MEDICAL, European Union Trademark Registration No. 009774241, filed on March 1, 2011 and registered on September 19, 2011, in International classes 5, 29, and 30; and XLS MEDICAL, International Trade Mark Registration No. 1092109, registered on August 19, 2011, in International classes 5, 29, and 30, designating various jurisdictions (collectively, the “XLS MEDICAL Mark”).
The Disputed Domain Name was registered on April 3, 2017, more than 7 years after the first trademark application for the XLS MEDICAL Mark filed by the Complainant. At the time of registration of the Disputed Domain Name, the Complainant’s weight loss brand was already one of the top weight loss brands in Europe for 5 years.
As provided in the Complaint, the Disputed Domain Name resolves to a landing page that displays sponsored pay-per-click links including, among others, “XLS MEDICAL” and “XLS”. In addition, there is a page offering the Disputed Domain Name for sale for USD 4,500. The page states: “Buy this domain—The owner of xls-medical.com is offering it for sale for an asking price of USD 4500!”
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; and
- the Disputed Domain Name was registered and is being used in bad faith.
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 the following three elements in order to prevail in this proceeding:
(i) The Disputed Domain Name is identical or confusingly similar to 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 XLS MEDICAL Mark as set forth below.
It is uncontroverted that the Complainant has established rights in the XLS MEDICAL Mark based on its years of use as well as its fame and notoriety throughout Europe. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the XLS MEDICAL Mark.
The Disputed Domain Name consists of the entirety of the XLS MEDICAL Mark along with a hyphen between the terms “XLS” and “medical”, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, 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 (“this Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
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 has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be 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. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its XLS MEDICAL Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to create a pay-per-click landing page with links targeting the Complainant and to offer the Disputed Domain Name for sale, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, based on the evidence before the Panel, the Respondent registered the Disputed Domain Name for commercial gain.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
First, the Disputed Domain Name was registered several years after the Complainant’s XLS MEDICAL Mark. The Panel finds it likely that the Respondent had the Complainant’s XLS MEDICAL Mark in mind when registering the Disputed Domain Name.
Second, the Disputed Domain Name’s resolving webpage displays pay-per-click links, indicating that the Respondent, by using the Disputed Domain Name, 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location in bad faith, as provided in paragraph 4(b)(iv) of the Policy. Further, the offering for sale of the Disputed Domain Name for USD 4,500, far in excess of the Respondent’s out-of-pocket costs with respect to the various costs related to the Disputed Domain Name (absent any evidence to the contrary), also evidences bad faith use of the Disputed Domain Name, as provided in paragraph 4(b)(i) of the Policy.
Finally, the registration of a domain name that is confusingly similar to a well-known trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith; here, while it is not clear that the Complainant’s mark is “well known” in the traditional sense, it is apparently one of Europe’s top weight loss brands, so it seems to have a sufficiently good reputation as to have been an attractive target for the Respondent. 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. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s XLS MEDICAL Mark for commercial gain.
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 <xls-medical.com> be transferred to the Complainant.
Lynda M. Braun
Date: May 22, 2020