WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Galderma Holding S.A. v. Withheld for Privacy Purposes Privacy service provided by Withheld for Privacy ehf / Yves Aya
Case No. D2021-0981
1. The Parties
The Complainant is Galderma Holding S.A., Switzerland, represented by Demys Limited, United Kingdom.
The Respondent is Withheld for Privacy Purposes Privacy service provided by Withheld for Privacy ehf, Iceland / Yves Aya, Cameroon.
2. The Domain Name and Registrar
The disputed domain name <galdermafillerdeport.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 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 April 6, 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 amended Complaint on April 7, 2021.
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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on May 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 a Swiss pharmaceutical company manufacturing and offering for sale dermatological and skin care products. The Complainant operates manufacturing plants in Germany, Canada, Sweden, Brazil, and France and sells its products in over 70 countries.
The Complainant operates a website at “www.galderman.com”.
The Complainant owns the following registrations for the mark GALDERMA (the “Mark”):
- No. 73705848, United States registered on March 28, 1989
- No. UK00001334029, United Kingdom registered on October 30, 1992
- No. 003833415, European Union registered on September 12, 2005
The Respondent registered the disputed domain name on September 10, 2020 and it resolves to a website selling products competing with the Complainant’s products under the following trademarks ALLERGAN, JUVERNER, DYSPORT.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed by appending the descriptive dictionary term “filler” and the meaningless term “deport” to the Complainant’s distinctive Mark. The Complainant asserts that the Complainant never authorized the Respondent to use the Mark, that the Respondent is not known by the Mark, and that the Respondent has never engaged in any bona fide commercial activity in connection with the Mark. The Complainant also asserts the Respondent has registered and used the disputed domain name in bad faith as part of a scheme to divert Internet users to the Respondent’s website to sell products competing with the Complainant’s products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed by the addition of the dictionary descriptive word “filler” and the term “deport” to the Complainant’s Mark. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusing similarity for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; see also WIPO Overview 3.0, section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). The generic Top-Level Domain (“gTLD”), in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. WIPO Overview 3.0, section 2.1.
The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the disputed domain name was registered and is being used in bad faith.
The confusingly similar disputed domain name resolves to a competitive website that is offering products competing with the Complainant’s products. It strains credulity to believe that it was mere coincidence that the Respondent chose the Complainant’s Mark as the leading term of the disputed domain name and then happened to offer products competing with the Complainant at the Respondent’s website. It is beyond contest that the Respondent is attempting to divert Complainant’s customers to the Respondent’s website for illicit commercial gain.
Moreover, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); and DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109.
The Complainant has met its burden under paragraph 4(a)(iii) 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 <galdermafillerdeport.com> be transferred to the Complainant.
William F. Hamilton
Date: May 20, 2021