WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Naos v. Hedayat Golabi, Bioderma Frace
Case No. DIR2020-0021
1. The Parties
The Complainant is Naos, France, represented Nameshield, France.
The Respondent is Hedayat Golabi, Bioderma Frace, Islamic Republic of Iran (“Iran”).
2. The Domain Name and Registrar
The disputed domain name <biodermafrance.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 2, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 3, 2020, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2020. On November 2, 2020, the Center notified the Respondent’s default.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 10, 2020. 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 beauty company that was founded in France 40 years ago. The Complainant owns 46 subsidiary companies and employs over 3,000 people around the world. The Complainant owns the skincare brand BIODERMA and it sells BIODERMA branded products in over 90 countries worldwide, including Iran.
The Complainant owns many trademark registrations for the trademark BIODERMA, including:
International Trademark Registration No. 267207 for BIODERMA registered on March 19, 1963
International Trademark Registration No. 510524 for BIODERMA registered on March 9, 1987
International Trademark Registration No. 678846 for BIODERMA registered on August 13, 1997
The Complainant owns the domain name <bioderma.com>. It was registered on September 24, 1997 and is used in association with an active website.
The disputed domain name was registered on September 22, 2020. The disputed domain name is associated with an online store, “GreenHealth”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark BIODERMA. The disputed domain name includes the Complainant’s trademark in its entirety. The addition of the geographical term “France” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. Furthermore, the addition of the country code Top-Level Domain (“ccTLD”) “.ir” does not prevent the likelihood of confusion.
The Complainant submits that the Respondent does not own any rights or legitimate interests in the disputed domain name. The Complainant does not have any relationship or business connection with the Respondent. The Respondent is not authorized in any way to use the BIODERMA trademark.
The Complainant further submits that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent must have been aware of the Complainant’s trademark by virtue of its status as a well-known trademark and its widespread reputation throughout the world. The disputed domain name points to an online shop that offers competing products. The Complainant contends that the Respondent has used the BIODERMA trademark to intentionally mislead consumers into believing that the website is connected with the Complainant, for purposes of commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(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 Panel finds that the Complainant does have trademark rights in the trademark BIODERMA by virtue of its trademark registrations listed in paragraph 4 of this Decision. The word “bioderma” appears to be a distinctive coined term.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark BIODERMA, as the disputed domain name includes the Complainant’s registered trademark in its entirety. The addition of the geographical indicator “France” and the ccTLD “.ir” does not prevent a finding of confusing similarity with the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and legitimate interests. The Complainant clearly owns rights in the well-known BIODERMA trademark as noted in section 4 of this Decision. The Complainant has used its trademark for many years before the Respondent registered the disputed domain name and has an established international reputation for cosmetic and skincare products. The evidence filed in this proceeding, which was not contested by the Respondent, supports the inference that the Respondent was aware of the Complainant’s trademark. The Respondent has chosen to use the disputed domain name to direct customers to an online store, which features competitor’s skincare products for purposes of monetary gain, which is not a bona fide offering of goods and services under the Policy.
In this situation, the burden shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
Based on the evidence of the Complainant’s strong reputation in the BIODERMA trademark and business, and in the absence of any response, the Panel is prepared to find that the Respondent must have registered the disputed domain name with the Complainant in mind. The disputed domain name contains the Complainant’s registered trademark as its first and dominant element. The Respondent’s choice of domain name is a clear indicator of an intention to capitalize on the Complainant’s reputation in its brand, which is confirmed by the direction of the disputed domain name to a commercial website, which sells competitors’ products. This form of abusive conduct supports a finding of registration and use in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirement 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 <biodermafrance.ir> be transferred to the Complainant.
Christopher J. Pibus
Date: November 24, 2020