WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferring B.V. v. Webmaster Ernesto Garcia, protected private name

Case No. D2020-2951

1. The Parties

The Complainant is Ferring B.V., the Netherlands, represented by Jacobacci Avocats, France.

The Respondent is Webmaster Ernesto Garcia, protected private name, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <ferringsa.com> is registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 November 19, 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 amended Complaint on November 23, 2020.

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 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2020.

The Center appointed Kennedy, Matthew as the sole panelist in this matter on January 20, 2021. 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 part of the Ferring biopharmaceutical group, founded in 1950, which specializes in reproductive medicine, gastroenterology and urology. The group has research and development centers and production facilities in many different countries. Group companies include Ferring Pharmaceuticals, Inc. in the United States and Ferring Pharmaceuticals SAS in Colombia. The Complainant holds multiple trademark registrations for FERRING, including International trademark registration 615597, registered on February 18, 1994, specifying pharmaceutical preparations and substances in class 5 and surgical, medical, dental and veterinary apparatus and instruments in class 10; Colombian trademark registration number 193716, registered on February 11, 1997, specifying pharmaceuticals in class 5; and United States trademark registration number 3662266, registered on August 4, 2009, specifying certain pharmaceuticals and pharmaceutical preparations in class 5. Those trademark registrations remain current. The Ferring group has also registered many domain names, including <ferring.com> that it uses in connection with its principal website where it provides information about itself and its products, and <ferringusa.com> that it uses in connection with its United States website.

The Respondent is an individual, identified as a webmaster, and an organization, the name of which has been disclosed by the Registrar as “protected private name”. The Respondent’s contact address in the Registrar’s WhoIs database is in the United States.

The disputed domain name was registered on July 15, 2020. It formerly resolved to a webpage in Spanish that prominently displayed a logo for “Ferring SAS”, ostensibly a hardware business (“comercializacion de artículos Ferreteros”), with a background picture of hardware items. The webpage did not identify any actual products, quote any prices or display any street address. The contact telephone number was a Colombian cellphone and it displayed the name of a director “”. The Complainant sent a cease-and-desist letter, in English, dated July 30, 2020, after which the disputed domain name ceased to resolve to an active website for a time, before being reactivated. The Complainant sent another cease-and-desist letter, in English, dated September 18, 2020, and the use of the disputed domain name changed again, at some time between October 29, 2020 and November 6, 2020, when the Complaint was filed. The disputed domain name now resolves to a webpage indicating that the page has gone on holiday.

The Registrar confirmed that the language of the Registration Agreement is English.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the FERRING trademark. It consists of that trademark plus the letters “SA” which can be understood as the abbreviation of the legal form of a Ferring company.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent was not authorized to register and use the Complainant’s trademarks or any variations thereof as a domain name. The disputed domain name reproduces the Complainant’s trademark and just adds the letters “SA”, referring to a company form, which reinforces the risk of affiliation and confusion.

The disputed domain name was registered and is being used in bad faith. The Complainant and its FERRING trademarks benefit from a strong reputation due to their global presence. The Respondent could not have been unaware of the existence of the Complainant and its prior rights at the time of registration of the disputed domain name. Any new attempt to make active use of the disputed domain name would lead to a likelihood of confusion as Internet users would inevitably be led to believe that the website would be owned or associated with the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following 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

Based on the evidence presented, the Panel finds that the Complainant has rights in the FERRING mark.

The disputed domain name wholly incorporates the FERRING mark as its initial and only distinctive element. It also incorporates the letters “sa”, which may be read as an abbreviation of a form of legal entity such as “Sociedad Anónima” but, in any case, the addition of these letters does not prevent a finding of confusing similarity between the disputed domain name and the mark. The FERRING mark is clearly recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The only other additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable 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; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The disputed domain name wholly incorporates the Complainant’s FERRING trademark as its initial element. The Complainant submits that the Respondent was not authorized to register and use the Complainant’s trademarks or any variations thereof as a domain name. The disputed domain name formerly resolved to a webpage ostensibly for a hardware supplier but there is little evidence on the record of this proceeding that the webpage was actually associated with a genuine hardware business. At the time of this decision, the disputed domain name is described as being on holiday. Accordingly, the Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is either use a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy.

The Respondent identifies himself as “Webmaster Ernesto Garcia” and the registrant organization’s name shows as “protected private name” in the Registrar’s WhoIs database. The webpage to which the disputed domain name formerly resolved displayed a logo for a company named “Ferring SAS” but, regardless of whether the Respondent registered that as a corporate name, there is no evidence that any other party knows the Respondent by that name, or “Ferring SA” or “Ferringsa”. Accordingly, there is no evidence the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut the Complainant’s prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] web site or location.”

The disputed domain name was registered in 2020, years after the Complainant obtained its trademark registrations for FERRING, including in the United States, the country of the Respondent’s contact address in the Registrar’s WhoIs database, and in Colombia, the country of the Respondent’s webpage contact telephone number. The Complainant has made long-standing use of its FERRING trademark and acquired a considerable reputation in the pharmaceutical sector, including in the United States and Colombia. The Panel notes that the Complainant’s group of companies includes Ferring Pharmaceuticals SAS in Colombia. The disputed domain name wholly incorporates the FERRING mark as its initial element. “Ferring” is not a dictionary word, as far as the Panel is aware. The webpage to which the disputed domain name resolved was ostensibly for a business named “Ferring SAS” but this does not explain why the Respondent chose to register “Ferring SA” as the operative element of the disputed domain name, without the final “s”. The Respondent twice deactivated the Ferring SAS webpage after receiving cease-and-desist letters from the Complainant. Given that there is little evidence on the record of this proceeding that the webpage was associated with a genuine hardware business, that webpage seems more likely to have been concocted to display a business type beginning with the letters “ferr” (“ferretero” meaning “owner of a hardware store”) and the supposed corporate name “Ferring SAS”. In view of these circumstances, the Panel considers it more likely than not that the Respondent knew of the Complainant and its FERRING trademark at the time that he registered the disputed domain name.

The Respondent formerly used the disputed domain name, which is confusingly similar to the Complainant’s FERRING mark, in connection with a webpage ostensibly to offer hardware for sale. Given the Panel’s findings above, the Panel considers that, on the balance of probabilities, the disputed domain name was intended to attract Internet users by creating a likelihood of confusion with the Complainant’s FERRING trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website within the terms of paragraph 4(b)(iv) of the Policy.

The Panel takes note that the use of the disputed domain name has changed and it now resolves to a page said to be on holiday. This change of use does not alter the Panel’s conclusion, if anything, it is a further indication of bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 <ferringsa.com> be transferred to the Complainant.

Kennedy, Matthew
Sole Panelist
Date: February 11, 2021