WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Laboratoires Fill-Med v. Name Redacted

Case No. D2020-2255

1. The Parties

The Complainant is Laboratoires Fill-Med, France, represented by Ebrand Services, France.

The Respondent is Name Redacted¹ .

2. The Domain Name and Registrar

The disputed domain name <fillrned.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2020. On August 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2020, 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 September 1, 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 September 2, 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 September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. On September 28, 2020, an individual sent an email communication to the Center entitled with the case reference of the present dispute, however with content related to another proceeding. The Respondent did not submit any response. Accordingly, the Center notified the Parties the commencement of panel appointment process on October 30, 2020.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on November 3, 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, Laboratoires Fill-Med, is an international company specialized in cosmetics and esthetic medicine that has developed and marketed anti-ageing products for medical esthetic professionals since 1978.

The Complainant owns several trademark registrations, including the following:

International trademark FILL-MED No. 1351198, registered on March 13, 2017 in classes 3, 5 and 10;

US trademark FILL-MED No. 5455956 and No. 79216916, registered on May 1, 2018 in classes 3, 5 and 10.

In addition, the Complainant owns a domain name portfolio, which includes the following domain names:

<fill-med.com> registered on October 25, 2017 and <fillmed.com> registered on October 25, 2017.

The disputed domain name <fillrned.com> was registered on July 15, 2020 and resolves to a pay-per-click website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar with the trademark FILL-MED in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.

More specifically, the Complainant claims that the Respondent started to send phishing emails to the Complainant’s partners as soon as the disputed domain name was registered. There is consequently no risk that the disputed domain name was illicitly used by a third party but the Respondent.

The Respondent registered the disputed domain name for the sole purpose of defrauding the Complainant’s business partners.

Finally, 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. On September 28, 2020, an individual sent an email communication to the Center entitled with the case reference of the present dispute, however referring to another dispute.

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 FILL-MED trademark.

As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

The Panel considers that the disputed domain name is confusingly similar with the Complainant’s FILL-MED trademark.

The disputed domain name contains the word “fillrned” which looks almost identical to “fillmed” with the use of the letters “r” and “n” to replace the letter “m”. Such replacement of letters and the absence of the dash in the disputed domain name does not prevent a finding of confusing similarity. Furthermore, the Panel considers that the disputed domain name constitutes a clear case of typosquatting.

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 generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11 of WIPO Overview 3.0). Thus, for the test for confusing similarity the Panel shall disregard the “.com” gTLD included in the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar with the FILL-MED trademark 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 relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name. The name of the Respondent is “Kay Yang” which does not resemble the disputed domain name in any manner.

Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name.

Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name – which is confusingly similar with the Complainant’s above-mentioned trademark – but rather that it intends to use the disputed domain name for the purpose of defrauding the Complainant's business partners and deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is the official site of the Complainant.

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 (Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.

C. Registered and Used in Bad Faith

To succeed under the Policy, a complainant must show that the disputed domain name has been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Complainant’ business and its trademark FILL-MED when it registered the disputed domain name <fillrned.com> on July 15, 2020.

The Respondent when registering the disputed domain name <fillrned.com> has targeted the Complainant’s trademark, in a typical act of typosquatting, with the use of the letters “r” and “n” to replace the letter “m” and thereby making it almost identical to “fillmed”, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s trademark for its own monetary benefit.

The Complainant has proved that the Respondent has used the disputed domain name to send fraudulent emails impersonating the Complainant and the Complainant’s business partners, some of which believed in the authenticity of those emails and made the requested transfers to a bank account belonging to an unidentified third party.

In similar circumstances, a previous UDRP panel said: “The fact that the Respondent used the disputed domain name to create a business email account and sent a phishing email to the Complainant’s customers indicates not only that the Respondent had prior knowledge about the Complainant’s business and trademark, but also that it registered the disputed domain name with the aim of fraudulently obtaining monies by creating likelihood of confusion with the Complainant’s trademark.” (PwC Business Trust and Price Waterhouse Coopers LLP / Sarah Wakida, WIPO Case No. D2020-0232).

The Panel finds that the Respondent has registered and uses the disputed domain name intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 <fillrned.com> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Date: November 11, 2020

¹ The Panel has concluded that the named Respondent was not in fact the individual responsible for the registration and use of the disputed domain name and has directed the name of the individual identified by the Registrar as the registrant of the disputed domain name should be redacted from this decision. All the references in this decision to “the Respondent” are references to the unknown underlying registrant of the disputed domain name.