WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Biofarma v. Ma John

Case No. D2016-2053

1. The Parties

The Complainant is Biofarma of Paris, France, represented by IP Twins S.A.S., France.

The Respondent is Ma John of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <prestamide.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 14, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 17, 2016. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that 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 in English and Chinese, and the proceeding commenced on October 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2016.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 17, 2016. 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 BIOFARMA, SAS, a France based company. The Complainant is the largest French pharmaceutical group on an independent level and the second largest pharmaceutical French group in the world. The Complainant is active in 140 countries and has more than 21,000 employees throughout the world.

The Complainant is the owner of several trademark registrations for the mark PRESTAMIDE. For example: French trademark registration number 4266480, with the filing date of April 20, 2016; European Union trademark registration number 015373343, with the registration date of August 17, 2016.

The disputed domain name was registered on April 25, 2016.

Currently, the disputed domain name is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is strictly identical to the trademarks of the Complainant.

The Complainant further contends that the Respondent is not commonly known by the disputed domain name, and that he has not acquired any trademark or service mark rights related to the PRESTAMIDE trademark.

The Complainant further contends that the Respondent’s use of the disputed domain name or preparation to use the disputed domain name demonstrate no intent to use it in connection with a bona fide offering of goods or services.

The Complainant further contends that the Respondent has never been granted an authorization, a license or any right whatsoever to use the Complainant’s PRESTAMIDE trademarks. Moreover, the Respondent is not commercially linked to the Complainant.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant argues that it is widely-known and it is inconceivable the Respondent doesn’t know of the Complainant’s rights in its PRESTAMIDE trademark.

The Complainant further argues that it believes that the Respondent somehow had insider knowledge of the

trademark and used this knowledge to unduly register domain names corresponding to trademark applications, and this is a clear evidence of the Respondent’s bad faith.

The Complainant further contends that the sole retention of the disputed domain name by the Respondent, is an attempt to prevent the Complainant from reflecting its trademark and company name in a domain name, and that is a strong evidence of bad faith.

The Complainant further argues the Respondent failed to answer the cease-and-desist letter sent to him on August 25, 2016, along with a translation in Chinese, and also the passive use of the Respondent in the disputed domain name – indicates the Respondent’s bad faith registration and use of the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of October 8, 2016.

The Complainant requested that the language of the proceeding be English.

The Respondent did not respond to the Complainant’s language request.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain name consists of Latin letters, rather than Chinese letters;

(ii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint;

(iii) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2. Substantive Matters

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of several trademark registrations for the mark PRESTAMIDE. For example: French trademark registration number 4266480, with the filing date of April 20, 2016; European Union trademark registration number 015373343, with the registration date of August 17, 2016.

The disputed domain name <prestamide.com> reproduces entirely the Complainant’s PRESTAMIDE trademark with the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The addition of the gTLD suffix “.com” does not have the capacity to distinguish the disputed domain name from the Complainant’s registered trademark and is disregarded when comparing the disputed domain name with the Complainant’s trademark. See Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175; See also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the PRESTAMIDE trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.

The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The disputed domain name is identical to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. (See Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095.) To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith.

The Respondent’s use of the distinctive trademark of the Complainant at the disputed domain name is also suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark is intended to make an impression of an association with the Complainant (see Swarovski Aktiengesellschaft v. fan wu, WIPO Case No. D2012-0065).

Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith.’” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

Also, the Complainant has submitted evidence of a reverse WhoIs report on the Respondent’s email address to demonstrate the Respondent systematic infringing behavior of registered similar domain names to registered trademarks, the Panel finds this as a clear indication of the Respondent’s bad faith.

Having regard to the evidence submitted by the Complainant, the Panel finds that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.)

Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent’s bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.) The present case falls into such appropriate circumstances where the disputed domain name is inactive, and no use is made by the Respondent since the disputed domain name was registered and the Respondent failed to provide with a reasonable explanation for registering and using the dispute domain name.

The Respondent’s lack of response to the cease-and-desist letter sent by the Complainant is a further

indication of the Respondent’s bad faith registration and use of the disputed domain name, especially when a Chinese translation was attached to the letter.

In light of the Complainant’s unique trademark, the Respondent’s systematic behavior, the passive use of the disputed domain name and the Respondent’s failure to answer to the cease-and-desist letter and to the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 <prestamide.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: December 1, 2016