WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NG Biotech v. Whois Agent, Domain Protection Services, Inc. / Patrice SARDA
Case No. D2021-0177
1. The Parties
The Complainant is NG Biotech, France, represented by Bignon Lebray, France.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America (“United States”) / Patrice SARDA, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <ng-biotech.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2021, 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 January 25, 2021, 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 January 27, 2021.
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 February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 9, 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 the French biotech corporation NG Biotech, a company focused on developing and manufacturing diagnostic tools, including for Covid-19 testing.
The Complainant obtained registrations for the trademark NG BIOTECH in numerous regions of the world, including the European Union Trade Mark registration number 010990711, registered on November 21, 2012; the International Trademark registration number 1496516, registered on September 19, 2019; and the United States Trademark registration number 6134306, registered on August 25, 2020.
The Complainant is also the holder of domain names incorporating the trademark NG BIOTECH such as <ngbiotech.com>, registered on March 22, 2012.
The disputed domain name <ng-biotech.com> was registered on April 8, 2020.
The Panel accessed the disputed domain name on March 23, 2021, at which time the disputed domain name did not resolve to any active website. However, the Complainant presented evidence that the disputed domain name has been used in connection with a webpage offering sanitary products for sale.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name integrates entirely the trademarks NG BIOTECH owned by the Complainant, to which a dash (“-”) has only been added in order to slightly differ from the Complainant’s original domain name. This is typically a case of “typosquatting”. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. The addition of other terms in the domain name may not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name. Indeed, there is no evidence of 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. The disputed domain name used to lead to a page on which various sanitary products were sold. The disputed domain name is now directing to no content at all. Such use might change again during the days or weeks after the filing of the present administrative proceeding. In addition, the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name, and has acquired no trademark or service mark rights in this respect, contrary to the Complainant. The Respondent has thus not acquired any legitimacy in registering the disputed domain name. Finally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent was clearly acting with an intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademark or service mark.
- The disputed domain name was registered and is being used in bad faith. It is very unlikely that the Respondent would have registered randomly and unintentionally the disputed domain name, which is confusingly similar to the Complainant’s trademarks. Moreover, the Respondent used the disputed domain name to present and sell the same or similar products as those offered by Complainant. The same content also appeared on a different website located at “www.test-biotech.com”, which is an additional proof of the Respondent’s bad faith, even though the website has also disappeared since then. Such registration and use is obviously motivated by commercial gain. The Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three 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
The Panel has no doubt that NG BIOTECH is a term directly connected with the Complainant’s biotech products and services.
Annexes 4.1 to 4.3 to the Complaint shows European Union, International, and United States trademark registrations for NG BIOTECH filled by the Complainant as early as in 2012.
The trademark NG BIOTECH is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark NG BIOTECH merely by the addition of a hyphen separating the terms “ng” and “biotech”, as well as the generic Top-Level Domain (“gTLD”) “.com”.
Previous UDRP decisions have found that the mere addition of symbols such as a hyphen to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437).
It is also already well established that the addition of a gTLD such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use 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; 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 or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant brought evidence that the dispute domain name was recently used to promote and sell competing sanitary products.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “ng-biotech” was chosen to compose the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent in April 2020, the trademark NG BIOTECH was already directly connected to the Complainant’s biotech activities.
The disputed domain name encompasses the trademark NG BIOTECH.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4, previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name (basically adding a hyphen between the terms that compose the trademark NG BIOTECH) was a mere coincidence.
Currently, no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.
In the Panel’s view, the circumstances that the Respondent is (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and, (c) not at least providing justifications for the registration of a domain name containing a third-party trademark together, certainly cannot be used in benefit of the Respondent in the present case, do not prevent a finding of bad faith.
In fact such circumstances, associated with (d) the former use of the dispute domain name to offer for sale competing sanitary products, and (e) the lack of any plausible interpretation for the adoption of the term “ng-biotech” in good faith by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied 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 <ng-biotech.com> be transferred to the Complainant.
Date: March 25, 2021