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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nipro Corporation v. Proxy Protection LLC / Gianfranco Vestuto

Case No. D2021-3070

1. The Parties

The Complainant is Nipro Corporation, Japan, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States” or “U.S.”).

The Respondent is Proxy Protection LLC, United States / Gianfranco Vestuto, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <niprocorp.com> is registered with DreamHost, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2021. On September 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 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 September 22, 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 amendment to the Complaint on September 23, 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 the Respondent of the Complaint, and the proceedings commenced on September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.

The Center appointed Christos A. Theodoulou as the sole panelist in this matter on October 22, 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, Nipro Corporation, is a Japanese Company publicly traded on Tokyo Stock Exchange, founded in 1954, and is one of the world-leading manufacturers of renal, medical-surgical, and interventional radiology products, according to the uncontested allegations of the Complainant.

The Complainant is allegedly one of the global leaders in medical technology. It allegedly employs more than 29,000 people.

The Complainant or its related entities is the owner of at least 225 trademark registrations in at least 51 jurisdictions worldwide that consist of or contain the trademark NIPRO. The Complainant is the owner, inter alia, of the following registrations for the NIPRO Trademark:

Japan Reg. No. 1,105,815, registered on February 10, 1975;
U.S. Reg. No. 1441070, registered on June 2, 1987;
United Kingdom Reg. No. UK00001584255, registered on February 16, 1996;
European Union Reg. No. 003205838, registered on August 23, 2004.

Further, the Complainant is the registrant of the domain name <nipro.co.jp> (created on March 28, 1997).

The disputed domain name <niprocorp.com> was created on May 21, 2021. It is used to impersonate the Complainant. Further, the Respondent is using the disputed domain name to deceptively convince users that is associated with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.

The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has presented evidence to demonstrate that it owns registered trademark rights for NIPRO.

The trademark NIPRO is included in its entirety in the disputed domain name. The fact that the Respondent has added the term “corp”, meaning corporation, and the generic Top-Level Domain (”gTLD“) “.com” in the disputed domain name do not prevent a finding of confusing similarity. In the circumstances of this case, the Complainant has establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.

In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point, and holds that the disputed domain name <niprocorp.com> is confusingly similar to the Complainant’s trademark NIPRO.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a respondent’s rights or legitimate interests in a domain name.

Noting that the Respondent is using the disputed domain name to redirect Internet users to a website which seems to be associated with the Complainant, in order to deceive Internet users that the disputed domain name is associated with the Complainant, the Panel finds that the Respondent is not in this case making a bona fide offering of goods or services. See e.g., PayPal Inc v. Jon Shanks, WIPO Case No. D2014-0888.

With respect to paragraph 4(c)(ii) of the Policy, in this case there is no indication from the present record that the Respondent has been commonly known by the disputed domain name.

With respect to paragraph 4(c)(iii) of the Policy, in this case there is no indication from the record that the Respondent is using the disputed domain name for a legitimate noncommercial or fair use.

Moreover, the Respondent does not seem to have any trademark registrations including the term “nipro”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.

As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraphs 4(b)(i) to 4(b)(iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name.

According to the uncontested allegations of the Complainant, the Panel notes that the Complainant had an established and well-known trademark.

Further, the Respondent is using the disputed domain name in connection with an email scheme imitating the Complainant. This behavior is considered evidence of bad faith. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4. In addition, there are numerous cases when bad faith was found where as in this case, the Respondent has imitated the Complainant to deceive its business partner via email, see e.g., Kimley-Horn and Associates, Inc. v. Jarrod Brennet, WIPO Case No. D2020-3431.

Finally, the default of the Respondent in the present circumstances seems to reinforce “the inference of bad faith registration and bad faith use” (see The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915).

In view of all the circumstances stated above, the Panel finds that the Respondent registered and is using the disputed domain name 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 disputed domain name <niprocorp.com> be transferred to the Complainant.

Christos A. Theodoulou
Sole Panelist
Date: October 29, 2021

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