WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Septodont Ou Septodont Sas Ou Specialites Septodont v. Dave James

Case No. D2021-1181

1. The Parties

The Complainant is Septodont Ou Septodont Sas Ou Specialites Septodont, France, represented by Novagraaf France SA, France.

The Respondent is Dave James, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <sepotdont.com> is registered with 1&1 IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 19, 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 29, 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 May 3, 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 May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 1, 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 French pharmaceutical and medical device company mainly dedicated to developing, manufacturing and distributing dental consumables.

The Complainant owns trademark registrations for the term SEPTODONT, among others:

- SEPTODONT, International Trademark Registration No.144537 registered on December 19, 1949;
- SEPTODONT’S SPOON, European Trademark Registration No.17912815 registered on October 6, 2018; and
- SEPTODONT, French Trademark Registration No.1516776 applied for on February 28, 1989.

The Respondent registered the Disputed Domain Name on March 22, 2020. The Disputed Domain Name is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the Disputed Domain Name <sepotdont.com> is confusingly similar to its SEPTODONT trademark since the Disputed Domain Name and the trademark SEPTODONT share the same overall impression with the only difference that one letter placed in the middle of the name is different.

In this regard, the Complainant alleges that the Disputed Domain Name is visually and aurally almost identical to the complainant’s SEPTODONT trademark.

Thus, Internet users will obviously think the Disputed Domain Name <sepotdont.com> belongs to the Complainant or has been registered under its name.

Rights or legitimate interests

The Complainant submits that the Respondent is not related to the Complainant and has absolutely no link with the Complainant’s activity. Also, the Respondent is not authorized by the Complainant.

The Complainant further alleges that the Respondent clearly registered the Disputed Domain Name while being aware of the infringement that the Respondent was going to bring to the Complainant’s rights. In addition, the Respondent could not ignore the existence of the SEPTODONT trademark.

Finally, the Complainant contends that the Respondent does not own trademark rights on the name “sepotdont” or “septodont”.

Registration and use in bad faith

The Complainant contends that the Disputed Domain Name has been registered in bad faith, since an email server is configured on the Disputed Domain Name. Thus, the Complainant considers that it is possible that the Respondent has created an email address in order to send fraudulent emails to customers, services providers, and/or suppliers, pretending to be the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of the SEPTODONT trademark as evidenced by its trademark registrations. Based on the evidence submitted, the Panel finds that the Disputed Domain Name <sepotdont.com> is confusingly similar to the Complainant’s SEPTODONT trademark. The inversion of the letter “t” and the letter “o” in the middle of the trademark represents a misspelling that does not prevent a finding of confusing similarity between then Disputed Domain Name and the Complainant’s trademark.

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

In this regard, this is a clear example of typosquatting. As section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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.”

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.”

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the SEPTODONT trademark.

The Respondent has failed to show that it has acquired any rights or legitimate interests with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods or services.

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of production of demonstrating its rights or legitimate interests in the disputed domain name, with the burden of proof always remaining on the Complainant. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Complainant has used its trademarks long before the Disputed Domain Name was registered.

In light of this, the Respondent more likely than not had knowledge of the Complainant’s SEPTODONT trademark when it registered the Disputed Domain Name.

The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and it has intentionally created a likelihood of confusion with the Complainant’s trademarks in order to attract Internet users for his own commercial gain.

Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its

trademarks or to register the Disputed Domain Name incorporating its SEPTODONT trademark.

The Respondent has not denied the Complainant’s assertions. The Panel is therefore of the view that the Respondent knew of the Complainant’s trademark and prior rights.

The Disputed Domain Name is currently inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Name does not currently resolve to an active website does not prevent a finding of bad faith use and does not change the Panel’s view in this respect.

Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

In the case at hand, the Respondent’s registration of the Disputed Domain Name confusingly similar to the Complainant’s SEPTODONT trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name, and its failure to respond to the Complaint, affirm a finding of bad faith. Due to this conduct, it is obvious that the Respondent intentionally created a likelihood of confusion between the Complainant’s trademark and the Disputed Domain Name in order to attract Internet users for its own commercial gain, as set out in paragraph 4(b)(iv) of the Policy.

The Panel moreover accepts the Complainant’s contention that the Disputed Domain Name has been registered in bad faith, since an email server is configured on the Disputed Domain Name.

Finally, the Respondent has taken active steps to conceal its true identity through a privacy service. This particular conduct in the circumstances of this case is a further evidence supporting a finding of the Respondent’s bad faith. See WIPO Overview 3.0, section 3.3.

Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and the use of the Disputed Domain Name.

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, <sepotdont.com>, be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: June 21, 2021