The Complainant is Gensight Biologics, France, represented by Cabinet Lavoix, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America.
The disputed domain name <lumevoq.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 22, 2019, 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 March 22, 2019 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 April 5, 2019.
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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2019.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 20, 2019. 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.
The Complainant is a biotechnology company that offers innovative clinical-stage gene therapy solutions and is currently focused on developing and commercializing novel therapies for patients with severe retinal neurodegenerative diseases. In particular, the Complainant has been developing a gene therapy medicine that targets a rare eye disease which causes a sudden and irreversible loss of vision in adolescents and young adults in less than a year, usually resulting in blindness. The Complainant intends on using its LUMEVOQ trade mark (details set out below) in relation to this new gene therapy pharmaceutical product, which is currently under clinical trials.
The Complainant is the registered owner of two LUMEVOQ trade marks, namely the French Trade Mark LUMEVOQ (registration No. 4464637, registered on June 26, 2018 for goods and services in classes 5, 16, 35, 41 and 42) and the International Trade Mark LUMEVOQ (registration No. 1452300, registered on December 21, 2018 for goods and services in classes 5, 16, 35, 41 and 42).
The Respondent is an individual based in Phoenix, Arizona in the United States. The Disputed Domain Name was registered on July 20, 2018 through a WhoIs privacy service. The exact identity of the Respondent is unclear based on the registrant information provided by the Registrar, as the registrant name is simply listed as “Domain Administrator”.
The Disputed Domain Name resolves to a parking page of the Registrar.
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is identical to the Complainant’s registered trade mark LUMEVOQ;
(b) the Respondent is not commonly known by the Disputed Domain Name and there is no evidence of the Respondent making a legitimate, noncommercial or fair use of the Disputed Domain Name, therefore the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the circumstances indicate that the Disputed Domain Name has been registered for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant (or its competitor) who is the registered owner of an identical trade mark, thereby supporting the fact that the Respondent is acting in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 or is being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the LUMEVOQ trade mark, based on its French and International trade mark registrations. The Disputed Domain Name incorporates the Complainant’s LUMEVOQ mark in its entirety.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension “.com” may be disregarded.
As such, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s LUMEVOQ trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts the Complainant has not authorised the Respondent to use the LUMEVOQ mark, and that there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the LUMEVOQ mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name.
The Disputed Domain Name resolves to a parking page of the Registrar. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services or for noncommercial or fair use purposes.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent acquired the Disputed Domain Name primarily for the purpose of selling the domain name to the Complainant (or its competitor) for valuable consideration, thereby constituting bad faith.
This is a highly fact-specific inquiry that requires an assessment of all the circumstances. Generally, the following circumstances, alone or together, could support a finding of bad faith on the part of the respondent, including inter alia: (i) the respondent’s likely knowledge of the complainant’s rights; (ii) the distinctiveness of the complainant’s mark; (iii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name. As stated in Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Hessamaldin Varposjty, WIPO Case No. DIR2014-0001, “[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”. See section 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Whilst the Complainant in the present situation has not provided any evidence to show that its LUMEVOQ mark is particularly well-known or distinctive, upon examination of all the circumstances of the case, the Panel finds that the following facts, when combined, strongly support an inference of bad faith on the part of the Respondent:
(i) the Respondent registered the Disputed Domain Name on July 20, 2018, which is the same date the Complainant’s French LUMEVOQ trade mark registration was published in the French Trademark Gazette (BOPI);
(ii) the Disputed Domain Name resolves to a standard parking page of the Registrar, which essentially equates to passive holding. It is generally recognised that the passive holding of a domain name does not prevent a finding of bad faith use (see section 3.3 of the WIPO Overview 3.0”);
(ii) the Respondent used a privacy service to register the Disputed Domain Name and his/her identity is concealed from the WhoIs records;
(iii) the identity of the underlying beneficial registrant is uncertain (the “disclosed” registrant appears to be yet another privacy/proxy service) and the Respondent’s email address is a long string of numbers and text, which suggest an attempt to shield illegitimate conduct; and
(iv) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name, or any explanation as to the reasons why he/she chose to register adomain name that incorporates “LUMEVOQ”.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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, <lumevoq.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: June 10, 2019