WIPO Arbitration and Mediation Center

DMINISTRATIVE PANEL DECISION

FERRING BV v. Contact Privacy Inc. Customer 1244666913 / Nicole Smith

Case No. D2020-0156

1. The Parties

The Complainant is FERRING BV, Netherlands, represented by AARPI SCAN AVOCATS, France.

The Respondent is Contact Privacy Inc. Customer 1244666913, Canada / Nicole Smith, United States of America (“United States” or “USA”).

2. The Domain Name and Registrar

The disputed domain name <ferrng.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 January 23, 2020 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 30, 2020.

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 February 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2020.

The Center appointed Eduardo Machado as the sole panelist in this matter on March 9, 2020. 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 multinational swiss pharmaceutical group, established since 1950, specialized in the development of reproductive and women’s health drugs. The company’s name is originated from the people of the island Föhr, who called themselves Feringers and spoke Fering. The Complainant is present in 56 countries, with in-house production in Argentina, Mexico, and Switzerland, among other countries.

The Complainant own several trademark registrations consisting or including the term FERRING in Switzerland, Europe, the USA, and Canada. The Complainant’s first trademark registration dates from March 10, 1987 (USPTO Registration No. 73515990), as provided by Annex 8 of the Complaint.

The Complainant is also the owner of a number of domain names composed of the FERRING mark, such as <ferring.com>, registered since 1996; <ferring.fr>; <ferring.es>; <ferringusa.com>, and others.

The Respondent registered the disputed domain name on June 14, 2019.

The disputed domain name does not currently resolve to any active websites.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the it’s registered FERRING marks as the disputed domain name reproduces the Complainant’s FERRING marks with the mere deletion of only one letter, that is, the “i”. According to the Complainant, this deletion would not prevent the similarity and overall impression of the disputed domain name to the Complainant’s FERRING marks.

In this sense, the Complainant alleges that the disputed domain name would consist of a typosquatting of the Complainant’s FERRING marks, and that the Respondent precisely chose to delete the letter “i” in order to create confusion with the Complainant’s marks and to profit off that confusion.

Moreover, the Complainant affirms that the Respondent has no rights nor legitimate interests in respect of the disputed domain name since the Respondent is not commonly known for the name FERRING nor has the Respondent filed any trademark applications for the FERRING term nor any other similar term. In addition, the Complainant affirms that the Respondent is not in any way related to the Complainant and that the Complainant has never authorized the Respondent to register nor to use the FERRING mark as a domain name.

Furthermore, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith as the Complainant’s trademark registrations were filed long before the registration of the disputed domain name and that the Complainant’s marks had acquired a substantial reputation in connection with the Complainant’s pharmaceutical business, reason why the Respondent most likely knew about the Complainant’s FERRING mark and registered the disputed domain name in order to pass off as the Complainant.

In regard to the bad faith in use of the disputed domain name, the Complainant argues the passive holding doctrine against the Respondent, also affirming that without being active the disputed domain can still be used by the Respondent to create email addresses or to impersonate the Complainant’s identity in order to trap Internet users, which would amount to bad faith in use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain the requested relief. These elements are:

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

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

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

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1. As disclosed through Annex 8 of the Complaint, the Complainant owns several trademark registrations for the FERRING mark, in several jurisdictions, notably in the United States (Registration No. 73515990), registered on March 10, 1987.

Moreover, the disputed domain name incorporates almost entirely the Complainant’s FERRING mark, with the mere deletion of the letter “i”, which does not prevent the confusing similarity between the disputed domain name and the Complainant’s mark. No further elements are added to the disputed domain name.

Furthermore, the use of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in order to establish identity or confusing similarity between the disputed domain name and the Complainant’s trademark (see Topvintage.nl BV v. DOMAIN ADMIN, WIPO Case No. D2017-1019 “the various generic Top-Level Domains (‘gTLDs’) in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only”; and also Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175).

The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel, can demonstrate Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances include:

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

(iii) the domain name holder 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.

No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services nor that the Respondent has been commonly known, as an individual, business or otherwise, by the disputed domain name.

The uncontested evidence on the file shows that the Complainant had registered the FERRING mark way before the registration of the disputed domain name, thus, the Complainant had rights in its mark at the time of the Respondent’s registration of the disputed domain name and that the Respondent nevertheless registered it.

Moreover, considering that the disputed domain name currently does not resolve to any active website, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use.

Considering the evidence on file, and considering that the Respondent failed to reply to the Complainant’s contentions, the Panel finds that there are no elements suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name.

The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the respondent includes, but is not limited to:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 website or location or of a product or service on the respondent’s website or location.

The above circumstances are non-exclusive. In the circumstances of this case, the Panel finds that the Respondent, by registering the disputed domain name which reproduces almost entirely the FERRING mark, did so with the intention of attracting the Complainant’s costumers to the disputed domain name, without the Complainant’s authorization, in order to create a likelihood of confusion with the Complainant’s trademark and to disrupt the Complainant’s business.

That is because, as evidence provided by Annex 8 of the Complaint, the Complainant has registered the FERRING mark in several jurisdictions since 1987 and makes use of the FERRING mark since 1950. In this sense, both use and registration of the FERRING mark by the Complainant predates the registration of the disputed domain name. Moreover, considering the Complainant’s wide international presence, it is unlikely that the Respondent was not aware of the Complainant’s FERRING mark when the Respondent registered the disputed domain name.

Furthermore, the disputed domain name registered by the Respondent reproduces, almost entirely the FERRING mark, with the mere removal of the “i” and without any additions in the disputed domain name.

In addition, no evidence has been presented that the Respondent has any rights or legitimate interests in respect of the disputed domain name. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services.

In this sense, the Respondent’s registration and use of the disputed domain name can only be interpreted as an attempt by the Respondent to confuse Internet users with the Complainant’s FERRING mark in light of the similarity of the domain name to the Complainant’s mark.

The Respondent’s registration of the disputed domain name can also be considered as typosquatting, a practice by which a registrant deliberately introduces slight deviations into marks for commercial gain, In this regard, previous UDRP panels have found that the practice of typosquatting is evidence of the bad faith registration of a domain name (see Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004‑1069; Lexar Media, Inc. v. MichaelHuang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816).

Moreover, considering that the scenarios listed by paragraph 4(b) of the Policy are non-exclusive and merely illustrative and considering that the Complainant has argued the doctrine of passive holding, the Panel understands that such can be applied to the case.

In regard to the doctrine of “passive holding”, from the inception of the UDRP, previous panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (section 3.3 of the WIPO Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Moreover, the FERRING mark has been in use by the Complainant since 1950, reason why the Respondent should have been aware of the Complainant’s trademark rights related to the FERRING mark when the Respondent registered the disputed domain name. Additionally, the Complainant has also been the owner of a number of domain names composed of the FERRING mark, such as <ferring.com>, registered since 1996. Furthermore, the Respondent did not reply to the Complainant’s contentions and has used a privacy tool to conceal its identity, therefore, no good-faith registration or use can be inferred in regard to the disputed domain name. Lastly, the Respondent has not made any active use of the disputed domain name, which does not resolve to an active website.

In this sense, considering that: i) the domain name reproduces almost entirely the Complainant’s marks; ii) no rights or legitimate interests can be inferred form the registration of the disputed domain name by the Respondent as well as that; iii) the disputed domain name does not currently resolve to any active website; the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Panel finds that the Complainant has established the third element 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 name <ferrng.com> be transferred to the Complainant.

Eduardo Machado
Sole Panelist
Date: March 23, 2020