WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Polichem S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted
Case No. D2021-0574
1. The Parties
Complainant is Polichem S.A., Switzerland, represented by UBILIBET, Spain.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Name Redacted1 .
2. The Domain Names and Registrar
The disputed domain names <buyciclopoli.com> and <ciclopoli.net> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 26, 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 Respondent of the Complaint, and the proceedings commenced on March 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2021. Respondent did not submit any formal response, however the Center received an email communication from someone named as Respondent stating that a third party used his company’s name without his knowledge to register the disputed domain names. The Center acknowledged receipt of the email and indicated that the email would be brought to the Panel’s attention and that it is the Panel’s role to decide her claim regarding identity theft. Accordingly, the Center notified the Parties of the Commencement of the Panel Appointment March 9, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on March 31, 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
Complainant researches, develops, manufactures and markets therapeutics and medicines in over seventy countries on five continents in the fields of dermatology, dermo-cosmetics, gynecology and pulmonology. One of these products is CICLOPOLI, a water-soluble nail lacquer containing Ciclopirox eight per cent, a well-known antifungal agent, specifically formulated for the treatment of onychomycosis. Complainant owns valid and subsisting registrations for the CICLOPOLI trademark in numerous countries, including in Argentina, Australia, Benelux, the European Union, Mexico, Switzerland, and Turkey, with the earliest priority dating back to the year 2005.
Respondent registered the disputed domain names on October 19, 2020. At the time of this Complaint, the disputed domain names resolve to different websites that ostensibly offer counterfeit versions of Complainant’s CICLOPOLI products for sale at discounted prices.
5. Parties’ Contentions
Complainant asserts ownership of the CICLOPOLI trademark and has adduced evidence of trademark registrations in numerous regions and countries around the world including the European Union and Turkey, with earliest priority dating back to 2005. The disputed domain names are confusingly similar to Complainant’s CICLOPOLI trademark, according to Complainant, because they each incorporate the entirety of Complainant’s CICLOPOLI trademark, whereas the addition of the descriptive term “buy” only strengthens the idea that the associated website is an official website of Complainant.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain names based on: the lack of any authorization, license or permission by Complainant for Respondent to use the CICLOPOLI trademark; the lack of any evidence that Respondent is known by the CICLOPOLI trademark; and Respondent’s use of the disputed domain names for the illegal purpose of selling counterfeit CICLOPOLI products.
Complainant argues that Respondent has registered and used the disputed domain names in bad faith for numerous reasons, including primarily that Respondent attempts to impersonate Complainant by creating an online shop nearly identical to Complainant’s website in order to sell counterfeit CICLOPOLI products.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii) 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.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the CICLOPOLI trademark has been registered in numerous regions and countries with priority dating back to 2005, fifteen years before the disputed domain names were registered by Respondent. Thus, the Panel finds that Complainant’s rights in the CICLOPOLI trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain names are identical or confusingly similar to Complainant’s CICLOPOLI trademark. In this Complaint, the disputed domain names are confusingly similar to Complainant’s CICLOPOLI trademark because, disregarding the “.com” and “.net” generic Top-Level Domains (“gTLDs”), the trademark is contained in its entirety within the disputed domain names. WIPO Overview 3.0 , section 1.7 . (“This test typically 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 … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.com” or “.net” in the disputed domain names, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 .
The confusing similarity is not dispelled by combination with the descriptive term “buy” because Complainant’s products, and indeed most consumer products for sale online, are bought. WIPO Overview , section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”) OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam, WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”).
In view of Complainant’s registration for the CICLOPOLI trademark, and Respondent’s incorporation of that trademark in its entirety in each of the disputed domain names, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview , section 2.1 .
Notwithstanding the Panel’s decision to redact the false registration data used by Respondent, it is evident that Respondent is not commonly known by the disputed domain names or Complainant’s CICLOPOLI trademark.
Indeed, UDRP panels have categorically held that use of a domain name for illegal activity – including the impersonation of the complainant, the sale of counterfeit products, and other types of fraud – can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable, or that Respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0 , section 2.13 . See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”). See also The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-0501 (“In addition, the disputed domain names […] have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”) However, such circumstantial evidence is not necessary in this Complaint because of the significant direct evidence proffered by Complainant. To this end, the second and third elements of the Policy may be assessed together where clear indicia of bad faith (as discussed in greater detail below) suggests that there cannot be any Respondent rights or legitimate interests. WIPO Overview 3.0 , section 2.15 .
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain names, and Respondent’s attempts to impersonate Complainant by creating an online shop nearly identical to Complainant’s website in order to sells counterfeit CICLOPOLI products, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain names:
i) Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
UDRP panels have categorically held that registration and use of a domain name for illegal activity –including impersonation, sale of counterfeit products, passing off, and other types of fraud – is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.3. Use of the disputed domain names by Respondent to pretend that it is Complainant or that it is associated with Complainant in order to sell counterfeit CICLOPOLI products “brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely Complainant.” Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017; see also GEA Group Aktiengesellschaft v. J. D., WIPO Case No. D2014-0357 (concluding that Respondent’s use of the disputed domain name to disrupt the Complainant’s business by using it to impersonate the Complainant for commercial gain was evidence of respondent’s bad faith registration and use of the disputed domain). Circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity, including evidence that:
(i) goods are offered disproportionately below market value;
(ii) goods are ordinarily only sold with Complainant’s authorization;
(iii) images of the goods used by a respondent suggest they are not genuine;
(iv) the respondent has misappropriated copyrighted images from the complainant;
(v) the goods at issue are extremely rare;
(vi) the goods at issue have prompted consumer complaints;
(vii) the respondent has masked its identity to avoid being contactable; and
(viii) so-called “trap purchases” demonstrate illegal respondent activity. WIPO Overview 3.0, section 2.13.2.
In this case, Complainant submitted a wealth of evidence establishing that Respondent uses the disputed domain names to sell counterfeit CICLOPOLI products, including:
- A side-by-side packing comparison of Complainant’s authentic CICLOPOLI products with test purchases made through the disputed domain names;
- A chemical analysis establishing that test purchases made through the disputed domain names do not contain the active ingredient Ciclopirox used for treating onychomycosis;
- Notice and takedown correspondence with Respondent’s numerous hosting providers and proxy hosting provider, among other intermediaries;
- A criminal complaint that Complainant filed with law enforcement agencies; and
- Evidence that the disputed domain name <ciclopoli.net> has been blacklisted by national health and safety authorities in Austria and Malta.
Finally, Respondent also evidently registered the disputed domain names using the identity of another party who has no actual connection to the disputed domain name. This use of false registration data in connection with the disputed domain names (and in this case, broader identity theft used to perpetrate illegal activity) further supports a finding of bad faith registration and use. See, e.g., Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024.
In view of Respondent’s attempted impersonation and attempts to passing itself off as Complainant in order to sell counterfeit versions of Complainant’s products and Respondent’s identity theft and use of false registration data, the Panel concludes that Complainant has established 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 names, <buyciclopoli.com> and <ciclopoli.net> be transferred to the Complainant.
Phillip V. Marano
Date: April 16, 2021
1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.