WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratoires Thea v. Contact Privacy Inc. Customer 12410169183 / Kim Jenny
Case No. D2021-2081
1. The Parties
Complainant is Laboratoires Thea, France, represented by AARPI Scan Avocats, France.
Respondent is Contact Privacy Inc. Customer 12410169183, Canada / Kim Jenny, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <theapharm.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2021. On June 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 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 Complainant on July 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 2, 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 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
Complainant is a pharmaceutical company, based in France. For years prior to the registration of the disputed domain name, Complainant has offered pharmaceuticals under its marks THEA and THEA PHARMA. Complainant is the owner of several trademark registrations for these marks, including, among others, International Registration No. 996576 (registered September 26, 2008) for THEA, and European Union Trade Mark Registration No. 15064711 (registered February 2, 2016) for THEA PHARMA.
The disputed domain name was registered on May 10, 2021. The disputed domain name is not linked to an active website.
5. Parties’ Contentions
A. Complainant
Complainant contends that (i) the disputed domain name, is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns marks for THEA and THEA PHARMA. Complainant further contends that these marks are distinctive and recognized globally. Complainant contends that Respondent has incorporated the dominant portion of Complainant’s THEA PHARMA mark into the disputed domain name. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain, likely in order to confuse consumers seeking pharmaceutical products offered under Complainant’s THEA and THEA PHARMA marks.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates the dominant portion of Complainant’s THEA PHARMA mark. Incorporating the “dominant feature” of a mark may be sufficient for a finding under this first element of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
Furthermore, the disputed domain name may also be viewed as incorporating in full Complainant’s THEA mark, with the addition of the term “pharm”. In this regard, numerous UDRP panels have agreed that supplementing or modifying a trademark with additional words (whether descriptive, meaningless, or otherwise) does not prevent a finding of identity or confusingly similarity for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614; General Electric Company v. Recruiters, WIPO Case No. D2007-0584; Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500; CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests” in the disputed domain name, as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. As the disputed domain name is not being actively used, there is no evidence that Respondent is making a bona fide offering of goods or services, or a noncommercial or fair use of the disputed domain name. Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by Respondent.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel’s decision, the disputed domain name is not currently linked to an active website. It is nevertheless well established that having an inactive website does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview 3.0, section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.
Rather, a UDRP panel must examine “the totality of the circumstances”, including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint and the Panel finds it implausible that the confusingly similar disputed domain name could be put to any good faith use. Furthermore, the Panel finds that Complainant has demonstrated a likelihood that Respondent was aware of Complainant’s prior use of its distinctive marks for pharmaceutical products. See Laboratoires Thea v. Yohan Henrino, WIPO Case No. D2015-0266. Finally, Respondent’s use of a privacy services further supports an inference of bad faith in these circumstances.
Therefore, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name in bad faith for purposes of 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 <theapharm.com> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Date: August 23, 2021