WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Laboratoires THEA v. Private Contact, Whoisshelter.com

Case No. D2021-0520

1. The Parties

The Complainant is Laboratoires THEA, France, represented by AARPI Scan Avocats, France.

The Respondent is Private Contact, Whoisshelter.com, United States of America.

2. The Domain Name and Registrar

The disputed domain name <blefasol.com> is registered with Nics Telekomunikasyon A.S. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2021, 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 Registrar also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish, to the Parties on February 23, 2021, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into Turkish, or a request for English to be the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on February 26, 2021. The Respondent did not comment on the language of the proceeding.

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 March 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2021. On March 15 and 18, 2021, informal email communications were received from the Respondent in Turkish and the Response was filed in Turkish with the Center on March 23, 2021.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on April 6, 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 an independent ophthalmic group in Europe. It specializes in the research, development, and commercialization of ophthalmologic products across the world. The Complainant is a company which is based in France and the Complainant has more than 30 affiliates and offices in Europe, Russian Federation, North Africa, and South America. Additionally, the Complainant’s products are available in more than 70 countries.

The Complainant is the owner of the following trademark registrations:

- BLEPHASOL, European Union Trade Mark n° 001622067 filed on April 2, 2000 and registered on December 3, 2001 for products in class 5;

- BLEPHASOL, European Union Trade Mark n° 011412301 filed on December 10, 2012 and registered on May 8, 2013 for products in class 3;

- BLEPHASOL, International word mark n° 757704 registered on April 19, 2001 for products in class 5;

- BLEPHASOL, Turkish Trademark no. 2012 87473 registered on January 3, 2014 for products in class 3;

- BLEPHASOL, Turkish Trademark no. 2001 12882 registered on February 28, 2003 for products in class 5.

Pursuant to the Annex G of the Complaint, the Complainant owns registered domain names, composed of the word “blephasol”, earliest of which was registered in 2008.

The disputed domain name was registered on April 13, 2018 using a privacy service. Once the Panel reviewed the Annex I2 of the Complaint, the Panel observed the “contact us” section of the website related to the disputed domain name which contains an email belonging to the owner of the disputed domain name H.K. The Panel notes that, in the Response, the Respondent claims to be the general manager of a company named Ophthalmedica (the Panel has searched the mentioned email address and the name H.K., and found that a Linkedin page shows that H.K. is a general manager of Ophthalmedica, an eye health company).

The Complainant submitted evidences which show that the disputed domain name is linked to a page informing that the disputed domain name was available for sale for USD 1,000 according to Annex I1 of the Complaint, and the disputed domain name is linked to a page informing that the disputed domain name was available for sale for USD 10,000 according to Annex I2 of the Complaint. While the disputed domain name previously resolved to page for sale, at the date of the Decision, the disputed domain name states the following error message: “This site can’t be reached.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant claims that the disputed domain name is confusingly similar to its pre-dating BLEPHASOL trademark the misspelling of which does not prevent a finding of confusing similarity between Complainant’s trademarks and the disputed domain name.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant upholds that the disputed domain name was registered and is used in bad faith by the Respondent.

B. Respondent

The Respondent contends that it is active in the field of ophthalmology since 2000 and that its company, Oftalmedika Sağlık Ürünleri Dış Tic. AŞ, has been in the same business since 2017. The Respondent also mentions that they have been planning to advertise through the disputed domain name products relevant to their field of business. Finally, the Respondent indicated that they could take into consideration a reasonable offer to transfer the disputed domain name. The Respondent did not submit any evidence to substantiate its contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Although the language of the Registration Agreement of the disputed domain name is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English. The Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, noting that the Respondent did not raise any objection regarding the language of the proceeding and successfully submitted a Response. In addition to this, pursuant to the Annex I1 of the Complaint, the website linked to the disputed domain name indicated “This Domain is for Sale” in English and Latin characters and the price is indicated in USD.

It is established practice to decide regarding the language of the proceeding to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593. In this case, the Complainant, which is not proficient in Turkish, will have to incur considerable expense and face delays if it is forced to translate the Complaint into Turkish.

Considering all the above elements, as well as the Panel’s authority to determine the language of the proceedings differing from the language of the registration agreement in accordance with the paragraph 11(a) of the Rules, the Panel considers that the appropriate language of the proceeding shall be English.

6.2 Substantive Issues

Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007‑1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the disputed domain name is confusingly similar to the Complaint’s trademark BLEPHASOL. As a previous UDPR panel stated that the replacement of the letters “ph” by the letter “f” represents a misspelling that does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. (See e.g. Laboratoires Thea v. see PrivacyGuardian.org / Vlad Ivleev, WIPO Case No. D2020-3413).

Moreover, the misspelling is also hardly noticeable and results in a very minor modification of the Complainant’s trademark.

This is a classic example of typosquatting. As section 1.9 of the WIPO Overview 3.0 states:

“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

(…) Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”

As such the disputed domain name is confusingly similar to the Complainant’s trademarks, notwithstanding the, apparently deliberate, misspelling. (See, e.g., Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869))

Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, it is generally disregarded under the first element confusing similarity test. See section 1.11, WIPO Overview 3.0. (See, e.g., Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269)

Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often-impossible task of proving a negative, as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. (See, e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.)

The Panel finds that the Complainant has satisfied this requirement. While the Respondent has mentioned in its Response a future product advertisement plan regarding the disputed domain name, this remained a mere allegation with no document submitted to substantiate the relevant arguments. Additionally, the Respondent admits his knowledge of ophthalmology which essentially concerns the Complainant’s field of business. The Respondent’s explanations do not serve to give rise to rights or legitimate interests in the disputed domain name.

Therefore, the Panel determines that the Complainant has provided uncontested prima facie evidence that the Respondent has no right or legitimate interest to use the Complainant’s trademarks in a confusingly similar way within the disputed domain name.

The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the BLEPHASOL trademark in the disputed domain name. There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate its rights or legitimate interests under the Policy, without any of the circumstances of paragraph 4(c) being applicable.

Moreover, the Panel notes that, disputed domain name previously resolved to a page informing that the disputed domain name was available for sale, and the Respondent indicated in its Response that it would be open to consider offers to transfer the disputed domain name. At the date of the Decision, the disputed domain name states the following error message: “This site can’t be reached”, which cannot be considered as a bona fide offering of goods or services.

Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered and used its BLEPHASOL mark. The evidence on the record provided by the Complainant with respect to the extent of use of its BLEPHASOL trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of Complainant’s BLEPHASOL mark. The Respondent admits in its Response being the general manager of a company active in the field of ophthalmology (which relates to the Complainant’s business). Therefore, the Panel consider that the Respondent was aware of the Complainant and its trademark at the time of the registration of the disputed domain name, and probably registered it to take an unfair advantage of the Complainant’s mark. The Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name along with the nature of the disputed domain name supports an inference of bad faith registration.

In addition, the disputed domain name has never been actively used by the Respondent, but it was offered for sale multiple times, including in the Response. The offer to sell the disputed domain name is in these circumstances further evidence of bad faith. The Panel considers that the Respondent registered the disputed domain name due to its similarity with the Complainant’s mark, and from the very beginning for purposes of subsequent resale including for a profit. UDRP panels, in general, have found that circumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-specific, including e.g., the nature of the domain name and the distinctiveness of the trademark at issue (see WIPO Overview 3.0, section 3.1.1).

Finally, when the Panel visited the disputed domain name, it resolved to an inactive/passive page, and the Panel finds that the Respondent’s arguments related to the future use of the disputed domain name lack credibility (in particular noting the nature of the disputed domain name, the Respondent’s offer for sale, and that the disputed domain name has been registered for 3 years). Section 3.3 of the WIPO Overview 3.0 states that the lack of active use of the domain name does not as such prevent a finding of bad faith.

Therefore, in light of the above-mentioned circumstances, in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) 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 <blefasol.com> be transferred to the Complainant.

Gökhan Gökç
Sole Panelist
Date: April 14, 2021