WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tosara Pharma Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Stephen Jadon

Case No. D2020-2273

1. The Parties

The Complainant is Tosara Pharma Limited, Ireland, represented by SILKA AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Stephen Jadon, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <continentalsudocrem.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2020, 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 September 1, 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 amendment to the Complaint on September 2, 2020.

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

The Center appointed Carol Anne Been as the sole panelist in this matter on September 30, 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 pharmaceutical company that manufactures and distributes a protective antiseptic skin cream with healing, antibacterial and antifungal properties known under the name and mark SUDOCREM.

The Complainant owns International registration No. 886513 for the mark SUDOCREM registered on May 19, 2006, with designations in many jurisdictions.

The disputed domain name was created on July 19, 2020. The disputed domain name resolves to a website that promotes sales of Sudocrem’s healing cream, with several images of the Sudocrem’s product on offer with prices in Euros. The website includes a header reference to “Continental Sudocrem” next to an image of the product. The Complainant alleges the website engages in unauthorized sales of its product.

5. Parties’ Contentions

A. Complainant

The Complainant alleges the disputed domain name is confusingly similar to its SUDOCREM mark because it incorporates the registered mark SUDOCREM in its entirety. The addition of the generic word “continental” or the generic Top-Level Domain (“gTLD”) does not differentiate the disputed domain name from the Complainant’s trademark rights. The Respondent is not known by the mark SUDOCREM and has not used the disputed domain name for a bona fide offering of goods or services, and is not making a legitimate or fair use of the disputed domain name. The Respondent uses the disputed domain name to lure consumers seeking to purchase the Complainant’s cream by presenting a website appearing to offer the Complainant’s products at the disputed domain name, as if it was the Complainant’s official website. The website falsely suggests an affiliation with or endorsement by the Complainant, which is evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant’s rights in the registered mark SUDOCREM date to 2006 and are well established in many jurisdictions, including the European Union. The disputed domain name incorporates the Complainant’s mark in its entirety, adding the dictionary term “continental” which could refer to, for example, an authorized sales territory. The addition of the term “continental” and the gTLD “.com” do not prevent confusing similarity with the Complainant’s rights.

The Panel finds the disputed domain name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent is not an authorized reseller of the Complainant’s Sudocrem product and uses the disputed domain name to create consumer confusion and lure consumers seeking the Complainant’s products. The Complainant does not allege that the products sold on the website at the disputed domain name are counterfeit or harmful, but that the Respondent’s sales are not authorized by the Complainant. The Respondent’s use of the Complainant’s SUDOCREM mark in the disputed domain name and on the website, in the absence of a disclaimer or other indication of an independent reseller, falsely suggests affiliation or endorsement by the Complainant and does not create a legitimate use or fair use of the disputed domain name. Accordingly, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which the Respondent has not rebutted. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Furthermore, the composition and use of the disputed domain name does not constitute fair use in these circumstances as the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.

The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name long after the Complainant first registered and used the SUDOCREM mark for its skin care products. Inclusion of the Complainant’s precise mark in the disputed domain name suggests the Respondent was aware of the Complainant’s prior rights. Use of the disputed domain name to resolve to a website selling the Complainant’s product, with several images of the product on the website and other references to SUDOCREM, appears calculated to lead consumers to falsely believe they are transacting with the Complainant or a reseller authorized by the Complainant in accordance with the Complainant’s standards. This suggests that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Respondent had the opportunity to respond to the Complaint and provide any other explanation, but failed to do so. The Respondent’s failure to rebut this suggestion indicates the lack of any other plausible explanation.

The Panel may draw inferences from the Respondent’s failure to provide an explanation other than bad faith.

The Panel concludes the Respondent registered and is using the disputed domain name 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, <continentalsudocrem.com>, be transferred to the Complainant.

Carol Anne Been
Sole Panelist
Date: October 14, 2020