WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ISISPHARMA France SAS, ISIS PHARMA GmbH v. Domain Admin / WhoIs Privacy Corp./ Maddisyn Fernandes

Case No. D2017-1905

1. The Parties

The Complainant is ISISPHARMA France SAS of Wasquehal, France and ISIS PHARMA GmbH of Brig, Switzerland represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Domain Admin, WhoIs Privacy Corp. of Nassau, Bahamas / Maddisyn Fernandes of La Paz of Bolivia (Plurinational State of).

2. The Domain Names and Registrar

The disputed domain name <isispharma.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2017. On September 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2017, 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 October 4, 2017, 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 October 9, 2017.

The Center verified that the Complaint together with the amendment to the Complaint (hereafter referred to as 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 October 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2017.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 3, 2017. 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 Complainants, ISISPHARMA France SAS and ISIS PHARMA GmbH (“Here after the Complainant”), is fully owned by DEWAVRIN SA. DEWAVRIN SA owns the company ISIS PHARMA GmbH, through its fully owned subsidiary Compagnie LAINIERE.

The Complainant states that it has produced and marketed a proprietary line of skin care products under the ISISPHARMA brand name since 2002.

The Complainant is the owner of multiple trademark registrations across various jurisdictions. In particular, the Complainant is the owner of:

- French Trademark No. 3334692, ISISPHARMA, filed on February 18, 2005 (classes 3 and 5);

- French Trademark No. 3651571, ISIS PHARMA DERMATOLOGIE, filed on May 18, 2005 (classes 3 and 5); and

- European Union Trade Mark No. 008296221, ISISPHARMA, registered on April 26, 2010 (classes 3 and 5).

The disputed domain name was registered on April 18, 2005. The disputed domain name resolves to a website with pay per click links related to the Complainant and its competitors.

5. Parties’ Contentions

A. Complainant

With respect to trademark rights, the Complainant contends as follows:

- by virtue of its trademark registrations, the Complainant is the owner of the trademarks.

- when comparing the disputed domain name to the Complainant’s trademark, the relevant comparison to be made is between only the second-level portion of the disputed domain name and the Complainant’s trademarks.

- the disputed domain name contains the Complainant’s ISISPHARMA trademark in its entirety, thus resulting in a domain name that is identical to the Complainant’s ISISPHARMA trademark.

- where a disputed domain name encompasses and captures the Complainant’s trademark in its entirety, previous panels have established that the disputed domain name should be found confusingly similar to that trademark.

With respect to rights or legitimate interests, the Complainant states the following:

- The Respondent is not sponsored by or affiliated with the Complainant in any way.

- The Respondent is not a customer of the Complainant either.

- The Complainant has not given the Respondent permission to use the Complainants’ trademark in any manner, including in the disputed domain name.

- Respondent is not commonly known by the disputed domain name.

- The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business.

- The website at which the disputed domain name resolves features multiple third-party links for skin care products.

- Further, the Respondent’s website also features a link that directly references the Complainant and their business. Presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website. Prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name.

- The Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii).

With respect to bad faith registration and use, the Complainant states the following:

- The Complainant and its ISISPHARMA trademark is known internationally, with trademark registrations across numerous countries.

- The Complainant has marketed and sold its goods and services using this trademark since 2002, which is well before the Respondent’s registration of the disputed domain name on April 18, 2005.

- By registering a domain name that incorporates the Complainant’s ISISPHARMA trademark in its entirety, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark.

- The Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of these facts it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain name was registered.

- The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on the Respondent’s website or location, Policy 4, paragraph (b)(iv).

- Previous panels have concluded that evidence of prior UDRP decisions in which disputed domain names have been transferred away from the Respondent to complaining parties supports a finding that Respondent has engaged in a bad faith pattern of “cybersquatting”.

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

Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of such domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its trademark rights in ISISPHARMA as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.

The Panel is also prepared to find that the disputed domain name <isispharma.com> is confusingly similar to the Complainant’s trademark ISISPHARMA. Where a disputed domain name encompasses and captures Complainants’ trademark in its entirety, past UDRP panels have established that the disputed domain name should be found confusingly similar to that trademark.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks.

The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The Panel visited the Archive.org database and was able to verify that the disputed domain name has not been subject to any use since the year 2005, except for the inclusion of links to ads related to the Complainant’s products and its competitors¹.

The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the disputed domain name.

The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.

Complainant’s allegations with regard to the Respondent’s registration and use of the domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of its default.

In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainant when it registered the disputed domain name, since the Complainant has produced and marketed proprietary line of skin care products under the ISISPHARMA brand name since 2002. The Complainant stated that the Complainant’s trademark was widely use since the year 2002. The Respondent has not denied this assertions.

The Panel also notes that the use of the disputed domain name is so closely linked and associated with the Complainants trademark that the Respondent’s registration of the disputed domain name strongly implies bad faith registration.

With respect to bad faith use, there are several other indicia of bad faith in this case.

The Panel made a search in the WIPO database and found nine (9) cases against the Respondent “Maddisyn Fernandes.” The Panel also made a search in the National Arbitration Forum database and found eleven (11) cases against the Respondent. Although each case has to be analyzed by its own facts and merits, the view of this Panel is that these cases are indicia of bad faith since the Respondent has always registered domain names comprising trademarks of third parties and was found in bad faith in all those cases.

The Panel also visited Archive.org² and was able to check that since its registration in the year 2005, there was no use of the disputed domain name except for the inclusion of pay per click links. Currently the disputed domain name contains pay per click links to the Complainant products and its competitors.

The Panel thus concludes that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, as required by the Policy, paragraph 4 (b)(iv).

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, and that the disputed domain name has been registered and is 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 disputed domain name <isispharma.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: November 21, 2017

¹ See https://web.archive.org/web/20060415000000*/isispharma.com

² http://web.archive.org/web/20060401000000*/isispharma.com