WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BIOFARMA SAS v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Dan Volcker, Bush Clinton, Kevin Yao, Domain Administrator, Gregg Warnken, David Flynn, Paddy’s Market Limited, Eddie Grazer, Krispy corp, Rex Paulson, Domain Manager, Boris Garnero, Domain Manager and Domain Admin / This Domain is For Sale, Home of Domains

Case No. D2017-2563

1. The Parties

The Complainant is BIOFARMA SAS of Suresnes, France, represented by IP Twins S.A.S., France.

The Respondents are Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachussets, United States of America / Dan Volcker of British Columbia, Canada, Bush Clinton of Houston, Texas, United States of America, Kevin Yao of Beijing, China, Domain Administrator, Gregg Warnken of Houston, Texas, United States of America, David Flynn, Paddy’s Market Limited of Sydney, Australia, Eddie Grazer, Krispy corp, of Atlanta, Georgia, United States of America, Rex Paulson, Domain Manager of London, United Kingdom of Great Britain and Northern Ireland, Boris Garnero, Domain Manager of New York, New York, United States of America and Domain Admin / This Domain is For Sale, Home of Domains of Phoenix, Arizona, United States of America.

2. The Domain Names and Registrars

The disputed domain names <asacovam.com>, <asaveram.com>, <bipressam.com>, <bipressamlo.com>, <bisperam.com>, <cosyrasa.com>, <coveramasa.com> and <solprilas.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

The disputed domain names <bisodexor.com>, <prestilam.com>, <prestixam.com> and <prestorvam.com> are registered with NameSilo, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2017. On December 22, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 22, 2018, NameSilo, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 26, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 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 amended Complaint on January 11, 2018.

The Center verified that the Complaint together with the amended 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 January 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2018.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 26, 2018. 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 part of the Servier Group: the largest French pharmaceutical group on an independent level and the second largest pharmaceutical French group in the world. The group is active in 140 countries and employs more than 21,000 people throughout the world.

The Complainant owns numerous trademark registrations, such as:

French Trademark ASACOVAM n°4290417, registered on July 28, 2016;

EU trade mark (“EU trade mark”) ASAVERAM n°015704372, dated July 29, 2016;

French Trademark ASAVERAM n° 4290414, dated July 28, 2016;

EU trade mark BIPRESSAM n°016557977, dated April 5, 2017;

French Trademark BIPRESSAM n°4351916, dated April 4, 2017;

EU trade mark BIPRESSAMLO n°016557985, dated April 5, 2017;

French Trademark BIPRESSAMLO n° 4351920, dated April 4, 2017;

EU trade mark BISODEXOR n°017040916, dated July 26, 2017;

French Trademark BISODEXOR n°4378942, dated July 25, 2017;

EU trade mark BISPERAM n°016557993, dated April 5, 2017;

French Trademark BISPERAM n° 4351924, dated April 4, 2017;

EU trade mark COSYRASA n°015717424, dated August 3, 2016;

French Trademark COSYRASA n° 4285314, dated July 5, 2016;

EU trade mark COVERAMASA n°015704448, dated July 29, 2016;

French Trademark COVERAMASA n° 4290555, dated July 28, 2016;

EU trade mark PRESTILAM n°016557894, dated April 5, 2017;

French Trademark PRESTILAM n° 4351910 dated April 4, 2017;

EU trade mark PRESTIXAM n°016557829, dated April 5, 2017;

French Trademark PRESTIXAM n° 4351901 dated April 4, 2017;

EU trade mark PRESTORVAM n°016557861, dated April 5, 2017;

French Trademark PRESTORVAM n° 4351906, dated April 4, 2017;

EU trade mark SOLPRILAS n°015717341, dated August 3, 2016;

French Trademark SOLPRILAS n° 4291305, dated August 2, 2016,

The disputed domain names <bipressam.com>, <bipressamlo.com>, <bisperam.com>, <prestilam.com>, <prestixam.com> and <prestorvam.com> were registered on April 5, 2017.

The disputed domain names <asacovam.com>, <asaveram.com> and <coveramasa.com> were registered on July 29, 2016.

The disputed domain names <cosyrasa.com> and <solprilas.com> were registered on August 3, 2016.

The disputed domain name <bisodexor.com> was registered on July 26, 2017.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names <asacovam.com>, <asaveram.com>, <bipressam.com>, <bipressamlo.com>, <bisodexor.com>, <bisperam.com>, <cosyrasa.com>, <coveramasa.com>, <prestilam.com>, <prestixam.com>, <prestorvam.com> and <solprilas.com> are identical to its trademarks.

The Complainant argues that there is nothing on the record that suggests that the Respondent is commonly known by the disputed domain names. The disputed domain names redirect respectively towards a parking page, a page offering the disputed domain names for sale, an error page or a page with a collection of web browser Screenshots. The Complainant also performed searches regarding the disputed domain names’ second levels. Those searches did not reveal any business or genuine offer of goods or services. The Respondents have no trademark or service marks related to the disputed domain names. The Respondents are not making a fair or legitimate noncommercial use of the disputed domain names. On the contrary, the Complainant contends the Respondent is making a bad faith commercial use of the highly distinctive terms “asacovam”, “asaveram”, “bipressam”, “bipressamlo”, “bisodexor”, “bisperam”, “cosyrasa”, “coveramasa”, “prestilam”, “prestixam”, “prestorvam” or “solprilas”. The Respondents have never been granted authorization, license or any right whatsoever to use the Complainant’s trademarks.

As to bad faith, the Complainant argues there is no way the Respondents did not have the Complainant’s rights in mind when they registered the disputed domain names. The Respondents systematically registered domain names identical to the Complainant’s published EU trade marks filings the exact same day as said filings. All the disputed domain names are registered within a period of more than eight months. The Complainant contends that the above-listed actions reveal a pattern of conduct consisting in preventing the Complainant from reflecting its trademarks in corresponding “.com” domain names. The Complainant strongly believes that the Respondents have registered the disputed domain names primarily for the purpose of selling it to the Complainant, owner of the corresponding trademarks, for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain names.

B. Respondents

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

6. Discussion and Findings

A. Consolidation against multiple respondents

The Complainant argues:

- <bisodexor.com>, <prestilam.com>, <prestixam.com> and <prestorvam.com> share the same registrar: Namesilo LLC;

- <bipressam.com>, <bipressamlo.com>, <bisperam.com>, <asacovam.com>, <cosyrasa.com>, <coveramasa.com>, <asaveram.com> and <solprilas.com> share the same registrar: PDR Ltd. d/b/a.;

- <bisodexor.com>, <prestilam.com>, <prestixam.com> and <prestorvam.com> share the same registrant and Organisation name: Domain Admin / This Domain is For Sale, Home of Domains;

- <bisodexor.com>, <prestilam.com>, <prestixam.com>,<prestorvam.com> and <cosyrasa.com> share the same authoritative Name servers: those from “dnsowl.com”;

- <bisperam.com> and <asaveram.com> share the same authoritative Name servers: those from “googledomains.com”;

- <bipressam.com>, <bipressamlo.com>, <bisperam.com>, <prestilam.com>, <prestixam.com> and <prestorvam.com> share the same registration date: April 5, 2017;

- <asacovam.com>, <coveramasa.com> and <asaveram.com> share the same registration date: July 29, 2016;

- <cosyrasa.com> and <solprilas.com> share the same registration date: August 3, 2016;

- <bisodexor.com>,<prestilam.com>,<prestixam.com> and <prestorvam.com> all redirect to a webpage offering the concerned domain name for sale for USD 950.

The Complainant argues that all the disputed domain names have been registered according the same pattern; “the registration of All the Disputed Domain Names occurred the exact same day as the filing – and publication – of the Complainant’s identical European Union Trademarks. The Complainant contends that this (…) highlights a systematic pattern of conduct that is a clear indication of the Disputed Domain Names being subject at the very least to common control.”

In addition, the Complainant argues that the contact information used for the registrant contact of all domain names registered with PDR Ltd. d/b/a PublicDomainRegistry.com is likely to be bogus or randomly generated by the same person.

Paragraph 10(e) of the Rules grants the Panel authority to “decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Similarly, paragraph 3(c) of the Rules provides that a complaint “may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Prior UDRP panels have treated multiple registrants controlled by a single person as one single respondent for the purposes of the Policy. See, e.g., Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Archipelago Holdings LLC. v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729. Absent common control, “[n]either the Policy nor the Rules otherwise make explicit provision for proceedings against legally separate respondents to be combined”. See, General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2:

“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The disputed domain names <bisodexor.com>, <prestilam.com>, <prestixam.com> and <prestorvam.com> registered with NameSilo, LLC, are all listed with the same registrant: Domain Admin / This Domain is For Sale, from Phoenix, Arizona, United States of America. The Panel finds that the said four registrations are held by the same respondent.

As to the remaining eight disputed domain names, the Complaint does not focus on the registrants’ identity. The eight disputed domain names registered through PDR Ltd. d/b/a PublicDomainRegistry.com have all different registrants. The Complaint documents that the eight registrations target the Complainant’s trademarks, use a privacy service provided by the registrar and resolve to a parking page or error page. Some, but not all the eight registrations, share the same registration date. The use of the same privacy service is of course insufficient to demonstrate common control. Likewise the fact that some of the registrations resolve to a parking page or an error page. There is no indication in the record that the Respondents are displaying similar content. While the Panel accepts that the fact that the disputed domain names are registered the same day as the Complainant’s trademark applications were published, it is not sufficient in itself, or in conjunction with the other factors relied on by the Complainant, to establish that the disputed domain names are under common control.

The Complainant has failed to put forward a sufficiently compelling case as to consolidation. Accordingly, the request of transfer of the disputed domain names <asacovam.com>, <asaveram.com>, <bipressam.com>, <bipressamlo.com>, <bisperam.com>, <cosyrasa.com>, <coveramasa.com> and <solprilas.com> is dismissed without prejudice. The Complainant may re-file separate complaints under the Policy as to these eight disputed domain names, or one complaint with sufficient evidence to consolidate the different registrants.

The Panel proceeds to rule on the disputed domain names <bisodexor.com>, <prestilam.com>, <prestixam.com> and <prestorvam.com> (the “Domain Names”).

B. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademarks BISODEXOR, PRESTILAM, PRESTIXAM and PRESTORVAM.

For the purposes of assessing the first element under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the Domain Names are identical to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The relevant Respondent, Domain Admin / This Domain is For Sale, Home of Domains does not have registered trademarks or trade names corresponding to the Domain Names. Nor is there any evidence suggesting that the Respondent has been using “bisodexor”, “prestilam”, “prestixam” or “prestorvam” in a way that would give it legitimate rights in the Domain Names. The Complainant has not granted any authorization to the Respondent.

The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, nor with a legitimate noncommercial or fair use purpose. It seems that the Respondent has chosen the Domain Names based on the value of the Complainant’s trademarks.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant’s trademarks and its business when it registered the Domain Names. The Respondent systematically registered the Domain Names identical to the Complainant’s published EU trade marks on the same day as the Complainant filed the trademark applications. The Panel finds registration in bad faith.

The Panel also finds use of the Domain Name in bad faith. The parking of a domain name identical to known trademarks, and the lack of any explanation from the Respondent, indicate bad faith. Moreover, the Respondent has registered the Domain Names for sale, at the price USD 950 each.

The Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of the 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 names, <bisodexor.com>, <prestilam.com>, <prestixam.com> and <prestorvam.com> be transferred to the Complainant.

The Panel dismisses without prejudice the Complaint as to the disputed domain names <asacovam.com>, <asaveram.com>, <bipressam.com>, <bipressamlo.com>, <bisperam.com>, <cosyrasa.com>, <coveramasa.com> and <solprilas.com>.

Mathias Lilleengen
Sole Panelist
Date: March 12, 2018