WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coloplast A/S v. Contact Privacy Inc. Customer 1246692499 / Kyle Romano

Case No. D2020-0923

1. The Parties

The Complainant is Coloplast A/S, Denmark, internally represented.

The Respondent is Contact Privacy Inc. Customer 1246692499, Canada / Kyle Romano, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <coloplastservices.com> 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 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 April 16, 2020, 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 amendment to the Complaint on April 16, 2020.

The Center verified that the Complaint, together with the amendment to 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 Miguel B. O'Farrell as the sole panelist in this matter on May 20, 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, Coloplast A/S, is a Danish multinational company, founded in 1957, that develops, manufactures, and markets medical devices and services related to ostomy, urology, continence, and wound care. It employs more than 12,000 people and operates around the world, with sales activities in 53 countries and production in Denmark, Hungary, France, China, and the United States.

The Complainant owns International trademark COLOPLAST Registration No. 883.011, registered on May 26, 2005, and renewed on May 26, 2015, covering multiple jurisdictions, including the United States where presumably the Respondent resides, for goods in classes 3, 5, and 10.

The disputed domain name <coloplastservices.com> was registered on March 16, 2020, and resolves to a site which reads: “503 Service Unavailable”.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name <coloplastservices.com> is confusingly similar with the trademark COLOPLAST in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is used in bad faith.

On April 14, 2020, an email was sent from the email address “[…]@coloplastservices.com” claiming to be an employee of the Complainant and informing an individual about a recruitment process supposedly run by the Complainant. The process contained a purchase of IT equipment, which is never the case in the Complainant’s legitimate recruitment procedure.

The Complainant is concerned that the general public could be subject to fraud as well as thinking that the described email communication has any kind of link to the Complainant.

The Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the trademark COLOPLAST.

The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether such domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.

In this case, the disputed domain name <coloplastservices.com> contains the Complainant’s trademark COLOPLAST in its entirety. The Panel considers that the addition of the descriptive term “services” is not sufficient to avoid a finding of confusing similarity.

As set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7, in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar with that mark.

Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of a descriptive term would not prevent a finding of confusing similarity under the first element.

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the trademark COLOPLAST in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; 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.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate Interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant has proved that on April 14, 2020, an email was sent from the email address “[...]@coloplastservices.com” claiming to be an employee of the Complainant and informing an individual about a recruitment process supposedly run by the Complainant. The process contained purchase of IT equipment which is never the case with the Complainant’s recruitment procedure. This cannot be considered a bona fide offering of goods or services under the Policy.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complaint succeeds on the second prong of paragraph 4 (a) of the Policy.

C. Registered and Used in Bad faith

The Respondent registered the disputed domain name that contains a third party’s trademark and there is no evidence in the file to show that it had authorization to do so. The Respondent could not ignore the existence of the name and trademark COLOPLAST when it registered the disputed domain name on March 16, 2020, because COLOPLAST is the name and the trademark of the Complainant which have been extensively registered (including in the United States where the Respondent presumably resides) and used by the Complainant many years before that date. Therefore, it is difficult to conceive that any use of the disputed domain name would not be related by Internet users to the Complainant and its activities. This assumption is further proved by the fact that the disputed domain name entirely contains the Complainant’s trademark COLOPLAST.

In light of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating COLOPLAST was very likely to capitalize on the reputation of the Complainant’s trademark by diverting Internet users to its own website.

The inclusion of the descriptive term “services” in the disputed domain name <coloplastservices.com> clearly strengthens the idea of an affiliation with the Complainant. Consumers seeking to purchase a COLOPLAST medical device or requiring services in connection therewith would be liable to enter the disputed domain name site expecting to contact the Complainant.

The Complainant has proved that the disputed domain name has been used in a phishing attempt by means of a fake recruitment process made by impersonating a person who supposedly would be an employee of the Complainant, which is not the case.

In conclusion, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith to confuse Internet users and thereby derive an illegal commercial benefit by taking advantage of the of the Complainant’s trademark COLOPLAST.

Therefore, the Complaint also succeeds on the third prong of paragraph 4 (a) of the Policy.

7. Decision

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 <coloplastservices.com> be transferred to the Complainant.

Miguel B. O’Farrell
Sole Panelist
Date: May 26, 2020