WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2020-0017
The Petitioner is Ferring B.V., Netherlands, represented by Jacobacci Avocats, France.
2. Domain Holder
The Domain Holder is E.G., United States of America.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <ferring-pharmacy.se>.
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on March 31, 2020. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on May 1, 2020.
The Center appointed Bengt Eliasson as the sole Arbitrator in this matter on May 4, 2020. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner, Ferring B.V. founded in 1950 is part of the Ferring group, which is a biopharmaceutical group, leader in reproductive medicine and women’s health, and in specialty areas within gastroenterology and urology. The Petitioner owns subsidiaries operating in almost 60 countries and markets its products in 110 countries. In Sweden the Petitioner is operating through its subsidiary, “Ferring Läkemedel AB” and in India through its subsidiaries “Ferring Pharmaceuticals PVT LTD” and “Ferring Therapeutics PVT LTD”.
The Petitioner is the owner of numerous trademark registrations in numerous countries throughout the world to cover notably pharmaceutical products and medical apparatus, including the European Union trademark (“EUTM”) registration No 004 030 193 FERRING registered on September 11, 2006, the International trademark registration No 1 275 686 FERRING PHARMACEUTICALS registered on September 24, 2015, and designating the European Union and the EUTM registration No 014 570 931 FERRING PHARMACEUTICALS registered on January 11, 2016.
A petition for Alternative Dispute Resolution for the disputed domain name <ferring-pharmacy.se> was filed by the Petitioner on March 18, 2020. The Domain Holder has been given an opportunity to submit a reply. No reply has been filed by the Domain Holder within the given deadline.
The disputed domain name <ferring-pharmacy.se> was registered by the Domain Holder on February 26, 2020 and is directed to a corresponding website.
The Petitioner claims that the disputed domain name shall be transferred to the Petitioner. Furthermore, the Petitioner also requests to have the dispute decided as an Accelerated Proceeding if the Domain Holder does not respond to the Petition.
6. Parties’ Contentions
The Petitioner is the owner of the above mentioned trademarks and the disputed domain name <ferring-pharmacy.se> is highly similar to the trademarks FERRING as well as FERRING PHARMACEUTICALS. The products at stake (pharmaceutical products) are identical to those covered by the above-mentioned trademark registrations (as well as the core business of the Petitioner). Therefore, it creates a likelihood of confusion in the mind of the Internet users, which cannot be overcome by the slight differences between the words PHARMACEUTICALS and PHARMACY.
The same assessment of similarities can be made for the registered domain names owned by the Petitioner.
The Petitioner claims that the disputed domain name <ferring-pharmacy.se> has been registered in bad faith.
FERRING is a well-known trademark in the pharmaceutical field over the world. When registering the disputed domain name in order to display a website dedicated to the sales of pharmaceutical products, the Domain Holder could not have ignored the Petitioner’s prior rights.
In this respect, it has been stated in a previous case that “the Respondent’s knowledge of the Complainant appears to be evident both from the choice of the disputed domain name adding the term “pharma” to the well-known FERRING trademark given the Complainant’s activities in the biopharmaceutical business” (Ferring BV v. Lisa, Ferring Private Ltd., WIPO Case No. D2019-0636).
The Petitioner claims that the disputed domain name <ferring-pharmacy.se> is being used in bad faith.
Not only the disputed domain name <ferring-pharmacy.se> and the corresponding website available at “www.ferring-pharmacy.se” use the name FERRING, but also all the content of said website is designed to make the Internet users believe that it is the Petitioner’s website. The Internet users is led to believe at each step that the domain name and the website are owned and managed by the Petitioner.
In view of the above, it is clear that the disputed domain name <ferring-pharmacy.se> was registered and is used in bad faith, in order to benefit from the established reputation of the Petitioner.
The Domain Holder has no rights or justified interest in the disputed domain name.
The Domain Holder has not been authorized to register and use the Petitioner’s trademarks and the Petitioner’s prior rights on its name, or any variations thereof, as a domain name and within the corresponding website. Additionally, the content on the website (or on the WhoIs database) does not evidence that the Domain Holder has any legitimate interest in the disputed domain name. On the contrary it refers to the Petitioner’s subsidiaries in Sweden and India. The Petitioner sent, via its legal counsel, a formal notice on March 13, 2020, through the contact form available at the address “www.ferring-pharmacy.se/contact.php” as the name and the contact details of the Domain Holder are not shown on the WhoIs excerpt. No reply has been received to this warning letter.
The above shows a complete lack of rights and legitimate interest on the part of the Domain Holder in respect of the disputed domain name <ferring-pharmacy.se>.
B. Domain Holder
The Domain Holder has not filed any reply or comments to the Petition for Alternative Dispute Resolution.
7. Discussion and Findings
A domain name may, in accordance with the .se Policy paragraph 7.2, be deregistered or transferred to the party requesting dispute resolution proceedings if all of the following three conditions are fulfilled:
1. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The Domain Name has been registered or used in bad faith, and
3. The Domain Holder has no rights or justified interest in the Domain Name.
All three conditions must be met in order for a petitioner to succeed in its action.
A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
The Petitioner is the owner of EUTM registration Nos. 004 030 193 FERRING and 014 570 931 FERRING PHARMACEUTICALS as well as International trademark registration No. 1 275 686 FERRING PHARMACEUTICALS, which are highly similar to the disputed domain name <ferring-pharmacy.se>.
B. The Domain Name has been registered or used in bad faith
The Arbitrator concludes, based on the above, that the disputed domain name <ferring-pharmacy.se> has been registered and used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name
The Domain Holder has not submitted any reply to the Petition and there is nothing else in the case stating that the Domain Holder has a right or justified interest in the disputed domain name. The Arbitrator therefore concludes that the Domain Holder has no right or justified interest in the disputed domain name.
The disputed domain name <ferring-pharmacy.se> shall be transferred to the Petitioner.
Date: May 12, 2020