WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferring B.V. v. Simon David

Case No. DME2012-0007

1. The Parties

The Complainant is Ferring B.Y. of Hoofddorp, Netherlands represented by Olson & Cepuritis, Ltd., United States of America.

The Respondent is Simon David of Olympia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ferring.me> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2012. On October 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2012, 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. On October 12, 2012, the Center requested the Complainant to provide a Complaint in accordance with the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) on April 30, 2008 (the “Policy”). The Complainant filed an amended Complaint on October 12, 2012.

The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy for .ME, approved by doMEn on October 1, 2012 (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2012.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 27, 2012. 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 the holder of the following trademark registrations (“FERRING Trademark”):

The disputed domain name <ferring.me> was registered on August 28, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

Identical or Confusingly Similar:

That the Complainant’s rights in the FERRING Trademark for pharmaceutical products are protected by 59 trademark registrations covering 70 countries;

That the Complainant is also the owner of 50 domain name registrations incorporating the FERRING Trademark, including the <ferringme.com> domain name;

That the Complainant’s rights in the FERRING Trademark predate the registration date of the disputed domain name <ferring.me>. The Complainant received its first registration for FERRING on May 27, 1983. The Complainant also started to register the FERRING domain names in 1996 and registered the domain name <ferringme.com> in 2005. The disputed domain name <ferring.me> was registered on April 28, 2012. Ownership was transferred to the current Respondent sometime between August 6, 2012 and August 29, 2012. The Complainant has established prior rights in the FERRING Trademak through its trademark registrations;

That the disputed domain name is confusingly similar to the FERRING Trademark because it incorporates the FERRING Trademark in its entirety. This may result in the wrongful association of the disputed domain name with the Complainant’s mark;

That customers may wrongfully associate the website of the Respondent with the Complainant;

That such possibility of confusion already exists. Internet searches for the disputed domain name <ferring.me> result in hits for Complainant, including its <ferringme.com> domain name;

That the Complainant’s right in the FERRING Trademark predate the registration date of the disputed domain name <ferring.me>.

Rights or Legitimate Interests:

That the Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the FERRING Trademark, or to use this trademark in any domain name or any variation thereof;

That the Respondent has never been commonly known by the term FERRING or by the domain name <ferring.me> or any variation thereof;

That the failure to make any active use of the disputed domain name, such as the failure to provide accurate information by the Respondent to the Registrar for the disputed domain name <ferring.me> results in a lack of rights or legitimate interests in the disputed domain name;

That the passive holding of a domain name is not a use in connection with a bona fide offering of goods or services and is not a legitimate noncommercial or fair use (and cites Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, WIPO Case No. D2000-1244.

Registered and Used in Bad Faith:

That the Complainant’s right in the FERRING Trademark was well established and existed before the registration of the disputed domain name <ferring.me>;

That the current the Respondent obtained ownership of the disputed domain name sometime between August 6, 2012 and August 29, 201 and, therefore, the Respondent’s use and registration of the disputed domain name <ferring.me> occurred well after Complainant established rights in the FERRING Trademark (The California Milk Processor Board v. Shimidt, WIPO Case No. DME2011-0009.);

That the disputed domain name was registered in bad faith since at the time of registration, the registrant had knowledge of the Complainant’s well-known product and trademark FERRING;

That the disputed domain name <ferring.me> was associated to pay-per-click advertisements in the past, but that after said domain name was transferred to the current Respondent, the pay-per-click advertisements were removed and replaced with an inactive website;

That the conduct of passive holding regarding the disputed domain name <ferring.me> and the inaccuracy of the information about the Respondent on the publicly available WhoIs establishes use and registration in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark 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.

As Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant’s trademark FERRING is entirely comprised in the disputed domain name <ferring.me>.

The addition of the ccTLD “.me” is irrelevant for the purposes of this analysis, as it does not add any distinctiveness to the disputed domain name (see,mutatis mutandis, Antena 3 de Televisión S.A. c/ D. Javier García Quintas, WIPO Case No. D2002-0537, CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859).

Therefore, the Panel finds that the disputed domain name is identical to the trademark of the Complainant. The first element of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a domain name:

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

(iii) you are 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. (Policy, paragraph 4(c)).

The case file does not contain any evidence showing that the Respondent has used or made preparations to use the disputed domain name. The said domain name is not currently resolving to any website.

Since the Respondent did not file a Response to the Complaint, there is no evidence on the record suggesting that the Respondent has been commonly known as <ferring.me>. The Complainant has proven to hold more than 50 trademarks in different jurisdictions, more than 50 domain names, and is known as FERRING in various countries around the world.

In the Panel’s view, the Respondent’s non-use of the disputed domain name cannot be deemed to be fair or legitimate. The Complainant has proven that the Respondent has taken active steps to conceal its true contact details, and perhaps its true identity (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. The second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith on the part of the Respondent:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

These circumstances are examples of bad faith conducts, but they do not constitute the exclusive circumstances under which bad faith can be found.

The Complainant has pointed out that this is a case of passive holding. Therefore, the Panel will analyze the factors set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, to determine whether the Respondent’s non-use constitutes bad faith under the Policy and UDRP case law:

(i) the Complainant’s trademark FERRING does have a strong presence and reputation and is widely known around the world, as evidenced by the numerous trademark registration certificates and evidence of use submitted by the Complainant;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

(iii) the Respondent has taken active steps to conceal its actual contact details, such as telephone number and zip code, and for this reason, the Panel does not know the actual identity of the Respondent, which did not provide a Response;

(iv) the Respondent has actively provided and failed to correct false contact details, in breach of its registration agreement; and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as passing off, infringing consumer protection legislation, or infringing the Complainant’s rights under trademark law.

Therefore, this case has passed the test set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Since the Respondent has not explained to this Panel the reason for providing false contact information, and for adopting the trademark FERRING as its domain name, which fully incorporates a trademark that has a substantial presence internationally, this Panel is of the opinion that the Respondent’s passive holding conduct constitutes bad faith under the Policy. The final element of the Policy has therefore been met.

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 <ferring.me> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: December 12, 2012