WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ipsen Pharma S.A.S. v. Admin - This Domain is for sale on Godaddy.com Escrow.com, Trnames Premium Name Services

Case No. D2018-0089

1. The Parties

The Complainant is Ipsen Pharma S.A.S. of Boulogne Billancourt, France, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Admin - This Domain is for sale on Godaddy.com Escrow.com, Trnames Premium Name Services of Ankara, Turkey.

2. The Domain Names and Registrar

The disputed domain name <forgolax.com>, <forlibgo.com> and <tanaktive.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2018. On January 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 18, 2018, 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.

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, and the proceedings commenced on January 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2018.

The Center appointed William R. Towns as the sole panelist in this matter on February 28, 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 a global biopharmaceutical group whose origins date back to the year 1929 and Dr. Henri Beaufour’s establishment of Laboratoires Beaufour in Dreux (France). The Complainant develops and commercializes medicines for use in oncology, neurosciences and rare diseases. The Complainant distributes over 20 drugs in more than 115 countries, employing approximately 5,100 employees worldwide. The Complainant’s total sales in 2016 eclipsed EUR 1.5 billion.

The Complainant is the owner of European Union Trade Mark registrations for FORLIBGO, TANAKTIVE, and FORGOLAX for pharmaceutical preparations, dietetic foods and substances for medical use, baby food, and nutritional substances. The FORLIBGO mark was applied for on February 3, 2017, and registered on May 18, 2017. The TANAKTIVE mark was applied for on February 2, 2017, and registered on May 26, 2017. The FORGOLAX mark was applied for on February 3, 2017, and registered on May 18, 2017. The Complainant also owns an International trademark registration for the TANAKTIVE.

The disputed domain names <forgolax.com>, <tanaktive.com>, and <forlibgo.com> were registered on dates coinciding with the dates on which the Complainant’s applications to register the FORLIBGO, TANAKTIVE, and FORGOLAX marks were filed with the European Union Intellectual Property Office (EUIPO). The disputed domain name prior to January 19, 2018, resolved to parking pages advertising the disputed domain names for sale on GoDaddy Auctions. The disputed domain names at present are not linked to any active website.

The Complainant’s representative issued cease-and-desist letters to the Respondent dated August 8, 2017, August 18, 2017, and August 28, 2017, to which the Complainant received no response.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names <forgolax.com>, forlibgo.com> and <tanaktive.com> are confusingly similar to the Complainant’s FORGOLAX, FORLIBGO, and TANAKTIVE marks, in which the Complainant has established rights. The Complainant notes that Top-Level Domains (“TLDs”) generally are not considered when assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, and that the relevant comparison is to be made only with the second-level of the disputed domain names. The Complainant maintains that the registration of the disputed domain names prior to the trademark registrations (on the same day the trademarks were filed) does not impact the first element of the Policy, so long as a complainant’s rights exist at the time the complaint is filed.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant represents that the Respondent is not sponsored by or affiliated with the Complainant, and does not have permission to the use Complainant’s marks. The Complainant further observes that the Respondent is not commonly known by the disputed domain name, and that prior to the filing of the Complaint the Respondent concealed his identity using a privacy service. The Complainant submits that the Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, nor made a legitimate noncommercial or other fair use of the disputed domain names. According to the Complainant, the Respondent is offering the domain names for sale on GoDaddy Auctions for an amount that greatly exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain names.

The Complainant maintains that the Respondent registered and is using the disputed domain names in bad faith. The Complainant submits that it defies common sense to believe the Respondent coincidentally registered domain names incorporating the Complainant’s FORGOLAX, FORLIBGO, and TANAKTIVE marks on the very day the Complainant submitted to EUIPO its applications to register these marks. According to the Complaint, this clearly demonstrates the Respondent’s knowledge of and familiarity with the Complainant’s brands and business, and reveals that the Respondent’s intent in registering the disputed domain names was to unfairly capitalize on the Complainant’s nascent trademark rights. The Complainant submits that the practice of registering domain names as soon as the corresponding trademarks have been filed with the relevant trademark office is a well-known practice among cybersquatters.

The Complainant contends that the Respondent’s registration of three domain names reflecting the Complainant’s trademarks name demonstrates a pattern of cybersquatting, calculated to foreclose the Complainant from using its trademarks in cyberspace. Additionally, the Complainant asserts that the Respondent is attempting to sell, rent, or otherwise transfer the disputed domain names to for valuable consideration in an amount greatly excess of the Respondent’s out-of-pocket expenses. In light of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain names in bad faith. The Complainant points to the Respondent’s failure to respond to the Complainant’s cease-and-desist letters as further evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(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 with respect to the domain name; and

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

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names <forgolax.com>, forlibgo.com> and <tanaktive.com> are identical to the Complainant’s corresponding FORGOLAX, FORLIBGO, and TANAKTIVE marks, in which the Complainant has demonstrated rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s marks are clearly recognizable in the corresponding disputed domain names.² Top-Level Domains (TLDs) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.³

While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s FORGOLAX, FORLIBGO, and TANAKTIVE marks. The Respondent registered the disputed domain names on the same days that the Complainant applied to register the trademarks with EUIPO, and each of the disputed domain names is identical to one of the Complainant’s marks. The Respondent has ­­­­­­­­­­­­­­­­­used the disputed domain names with parking pages advertising the disputed domain names for sale on GoDaddy Auctions.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Respondent has not brought forward any evidence of rights or legitimate interests in the disputed domain names. In the absence of any explanation by the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is there any indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks, and there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. That the Respondent registered the disputed domain names prior to the Complainant’s acquiring registered rights in the FORLIBGO, TANAKTIVE, and FORGOLAX marks does not preclude a finding of bad faith in the attendant circumstances of this case. The timing of the Respondent’s registration of the disputed domain names makes manifest the Respondent’s awareness of the Complainant’s trademark applications, and the Respondent’s subsequent use of the disputed domain name unequivocally evinces the Respondent’s attempt to exploit or otherwise capitalize on the Complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.2. The record in this case establishes that the Respondent registered and is using the disputed domain names in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <forgolax.com>, <forlibgo.com> and <tanaktive.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: March 12, 2018

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

² See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

³See WIPO Overview 3.0, section 1.11 and cases cited therein. The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

⁴ See WIPO Overview 3.0, section 1.1.3 and cases cited therein.