WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MD Fonscare v. El Gu, El Gu

Case No. D2021-2439

1. The Parties

The Complainant is MD Fonscare, France, represented by Cabinet Bouchara, France.

The Respondent is El Gu, El Gu, France.

2. The Domain Name and Registrar

The disputed domain name <mdfonscare.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 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 August 10, 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 August 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2021.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on September 29, 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 following facts are based on the submissions in the Complaint and the Annexes to the Complaint.

The Complainant is a French company specialized in the wholesale of medical and pharmaceutical products.

The Complainant is the owner of several trade marks for MD FONSCARE including the following:

- French Trade Mark (Word) MD FONSCARE No. 4372795 filed on June 30, 2017.

The Complainant is also the owner of the domain name <md-fonscare.fr> reflecting its trade mark.

The Domain Name was registered on April 16, 2021.

The Domain Name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to the MD FONSCARE trade mark in which the Complainant has rights as the Domain Name consists of the entire MD FONSCARE trade mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant submits that the Respondent has not obtained any authorization to use the Complainant’s trade mark in the Domain Name and that the Respondent has no relationship with the Complainant. Furthermore, the Complainant contends that the Respondent is not commonly known by the Domain Name and that is has not conducted any legitimate business under the name “md fonscare”. The Complainant also submits that the current passive holding of the Domain Name cannot qualify as use in connection with a bona fide offering of goods or services or a legitimate, noncommercial or fair use of the Domain Name. Further, the Complainant stresses that one would expect a legitimate business to provide information that allows it to be contacted, which is not the case in this instance since the Respondent's information is hidden.

The Complainant contends that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trade mark and thus in bad faith. The Complainant points to the fact that the MD FONSCARE trade mark does not have any meaning and is not a common term and is thus highly distinctive. The Complainant contends that the Domain Name is also being used in bad faith and that Internet users would be induced erroneously to expect the Domain Name to resolve to a website operated by the Complainant or that an email received from an email address under the Domain Name would come from the Complainant. The Complainant also points to the DNS set up of the Domain Name with active MX records meaning that emails could be sent using the Domain Name and that this is a threat hanging over the Complainant. Finally, the Complainant argues that the fact that the Domain Name is passively held cannot prevent a finding of bad faith.

B. Respondent

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

6. Discussion and Findings

In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in MD FONSCARE, which is reproduced in its entirety in the Domain Name.

The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark MD FONSCARE in which the Complainant has rights.

At the second level, the Domain Name solely consists of the Complainant’s MD FONSCARE trade mark in its entirety.

Then there is the addition of the generic Top-Level Domain (“gTLD”) “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element of confusing similarity test.

Thus, the Panel finds that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or

(iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the Respondent to rebut the showing by providing evidence of its rights or interests in the domain name.

Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name.

The Complainant has stated that it does not know the Respondent and that it has not licensed or otherwise authorized the Respondent to make any use of its MD FONSCARE trade mark. There is no indication that the Respondent is commonly known by the Domain Name.

Given the overall circumstances of the present case, the current absence of use of the Domain Name cannot be considered bona fide, legitimate or fair and in the absence of a response from the Respondent there is nothing suggesting that the Respondent made any preparations to use the Domain Name in connection with a bona fide offering of goods or services.

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.

The Domain Name reproduces the exact MD FONSCARE trade mark of the Complainant and this cannot be a coincidence given the overall circumstances of the present case including: (i) the goodwill and reputation of the Complainant’s MD FONSCARE trade mark especially in France where the Respondent appears to be based, (ii) the fact that the Domain Name was registered relatively recently and some years after the registration of the trade mark MD FONSCARE and, (iii) the fact that the MD FONSCARE trade mark is a fanciful term.

Thus, the Panel finds that the Domain Name was registered in bad faith.

As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel considers that the Domain Name is used in bad faith.
The Domain Name appears to be passively held. Passive holding itself would not cure the Respondent’s bad faith given the overall circumstances here, specifically the renown of the Complainant’s MD FONSCARE trade mark, especially in the country where the Respondent appears to be based and the Respondent’s default.

In addition, the DNS setup of the Domain Name (with active MX records) leads the Panel to consider that the Domain Name could be used to deceive Internet users. In these circumstances, the Domain Name constitutes a potential threat hanging over the head of the Complainant.

In the Panel’s view the fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Respondent’s bad faith.

Thus, the Panel finds that the Domain Name has been registered and is also being used in bad faith.

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 Domain Name, <mdfonscare.com> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: October 13, 2021