WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Expanscience v. Sarah Hampton

Case No. DCO2020-0064

1. The Parties

The Complainant is Expanscience, France, represented by Nameshield, France.

The Respondent is Sarah Hampton, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <expanscience.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 October 9, 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 October 9, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2020.

The Center appointed Federica Togo as the sole panelist in this matter on December 7, 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

It results from the undisputed evidence provided by the Complainant that it is the registered owner of International Registration No. 282517 EXPANSCIENCE (word mark) registered on April 17, 1964 in classes 1, 3, 5, 10 and 21, notably concerning pharmaceutical and cosmetic products and designating several countries worldwide. This mark has been duly renewed and is in force.

In addition, the Complainant owns the website “www.expanscience.com”, which was created on April 4, 1997 and is used by the Complainant in connection with its official activity.

It results from the information disclosed by the Registrar that the disputed domain name was created on August 1, 2020.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolved to a parking page comprising pay-per-click links, some of which are clearly related to the pharmaceutical and cosmetic sector in which the Complainant operates and that the disputed domain name is offered for sale (i.e. for USD 688 and for a minimum price of USD 500).

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that the Complainant is a 100% French family-owned pharmaceutical and dermo-cosmetics laboratory, who has been developing its expertise for more than 70 years. The Complainant develops and manufactures innovative osteoarthritis and skincare products, including Piasclédine 300 and Mustela sold in nearly 120 countries. The Complainant counts 16 subsidiaries all around the world and had more than 266,9 million Euros of turnover in 2019.

The Complainant contends that its trademark EXPANSCIENCE is distinctive and well-known.

The Complainant further contends that the disputed domain name is identical to the Complainant’s registered trademark EXPANSCIENCE since it includes the trademark EXPANSCIENCE in its entirety without any adjunction of letter or word.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has not been commonly known by the disputed domain name, since it is not identified in the WhoIs database as the disputed domain name. According to the Complainant, it has never licensed or otherwise authorized the Respondent to use its trademark or to register any domain name including the above-mentioned trademark. In addition, the Respondent is not affiliated with nor authorized by the Complainant in any way; the Complainant does not carry out any activity for, nor has any business with the Respondent. It further results from the Complainant’s undisputed contentions that the disputed domain name resolves to a parking website comprising pay-per-click links. The Complainant therefore concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain name.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant’s undisputed allegations, the Respondent has registered and used the domain name with full knowledge of the Complainant’s trademark, given the distinctiveness of the Complainant’s trademark EXPANSCIENCE and its reputation. The Complainant further contends that the Respondent has attempted to attract Internet users for commercial gain to his own website thanks to the Complainant’s trademarks for its own commercial gain, which is an evidence of bad faith, since, according to the Complainant’s proved allegations, the disputed domain name resolves to a parking website comprising pay-per-click links.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

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

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

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

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of International Registration No. 282517 EXPANSCIENCE (word mark) registered on April 17, 1964 in classes 1, 3, 5, 10 and 21, notably concerning pharmaceutical and cosmetic products and designating several countries worldwide. This mark has been duly renewed and is in force. This trademark registration predates the creation date of the disputed domain name, which is August 1, 2020.

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark EXPANSCIENCE is fully included in the disputed domain name.

Finally, the country code Top-Level Domain (“ccTLD”) “.co” of the disputed domain name has to be disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark EXPANSCIENCE or the registration of the disputed domain name.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

In addition, it results from the undisputed evidence before the Panel that the disputed domain name resolves to a parking website comprising pay-per-click links that compete with or capitalize on the Complainant’s trademark. UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead internet users (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.9 with further references). This Panel shares this view. In particular, the Panel is satisfied that the registered trademark EXPANSCIENCE is distinctive. Therefore, such use can neither be considered as bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith.

The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular, but without limitation, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).

It is the view of this Panel that the Respondent has actually registered the disputed domain name primarily for the purpose of selling it either to the Complainant or to third persons, in particular to one of the Complainant’s competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. According to the Complainant’s uncontested allegations the Respondent has offered the disputed domain name for sale on the domain marketplace AFTERNIC (i.e. for USD 688 and for a minimum price of USD 500). This Panel finds that this sum is in excess of any out-of-pocket costs directly related to the disputed domain names (see e.g.T. Rowe Price Group, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1955; Linatex Limited v. Yunkook Jung, WIPO Case No. D2019-1784).

In addition, this finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following:

(i) the Respondent’s failure to submit a response;
(ii) its failure to provide any evidence of actual or contemplated good-faith use;
(iii) the implausibility of any good faith use to which the disputed domain name may be put;
(iv) the disputed domain name resolving to a parking page comprising pay-per-click links some of which are clearly related to the pharmaceutical and cosmetic sector in which the Complainant operates (see section 3.5 of WIPO Overview 3.0).

The use of the disputed domain name to resolve a parking page is evidence of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 <expanscience.co> be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: December 21, 2020