WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Recipharm AB v. Registration Private, Domains By Proxy, LLC / Kirsten O’Mahony

Case No. D2019-2079

1. The Parties

The Complainant is Recipharm AB, Sweden, represented by Groth & Co KB, Sweden.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Kirsten O’Mahony, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <secured-recipharm.com> (the “Disputed Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2019. On August 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 27, 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 August 29, 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 amendment to the Complaint on August 29, 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 September 3, 2019. On September 9, 2019, the Respondent sent an email communication to the Center, claiming that they had never heard of the Disputed Domain Name. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. As no formal Response was received, the Center notified the Commencement of Panel Appointment Process on September 24, 2019.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on September 30, 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.

4. Factual Background

The Complainant is a contract development and manufacturing organization, supporting pharmaceutical companies. The Complainant is the holder of a number of registered trademarks for RECIPHARM across multiple jurisdictions, including:

- logo , European Union mark registered with the European Union Intellectual Property Office (EUIPO) on September 28, 2010, under number 009029943 in classes 5, 10, and 42; and

- logo , International trademark registered on August 17, 2016, under number 1331103 in classes 5, 10, and 42.

The Disputed Domain Name has been registered on February 13, 2019. The Disputed Domain Name does not resolve to an active website. The Complainant has added a screen print showing that the Disputed Domain Name used to resolve to a warning page in its browser, informing the Internet user that the Disputed Domain Name resolves to a malicious website is. Several specialized search engines have listed the Disputed Domain Name for phishing activities.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use, as it was being used for phishing activities. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

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

In an email communication, the Respondent stated that it had never heard of the Disputed Domain Name. The Respondent added: “I have no idea why my details are connected to this. However, a few months ago my Microsoft Exchange account was hacked. I am not sure what happened during this period but I do recall it was something to do with lots of new domains. Could this be connected?”

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has established that there are RECIPHARM trademarks in which it has rights. The trademarks have been registered and used in various countries in connection to the Complainant’s services in the pharmaceutical sector.

The Disputed Domain Name incorporates the Complainant’s RECIPHARM trademark in its entirety, merely adding the prefix “secured”. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the Disputed Domain Name, the additions of other terms would not prevent a finding of confusing similarity.

The Panel is of the opinion that the mere addition of a term/s to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjackenoutlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <download-limewire-now.com> was held to be confusingly similar to the LIME WIRE trademark).

Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s RECIPHARM trademark. Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0 ).

The Complainant considers that the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods and/or services and that the Respondent has not made a legitimate use of the Disputed Domain Name. The Complainant submits that the Respondent is deliberately and illegitimately disrupting the business of the Complainant.

The Panel finds that the Complainant has succeeded in making a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Moreover, the email communication from the Respondent, alleging that its Microsoft Exchange account had been hacked, may indicate that the Respondent’s identity was stolen for the purpose of registering the Disputed Domain Name. In any event, this allegation conclusively shows that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Therefore, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith, and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

The Respondent has incorporated the Complainant’s RECIPHARM trademark in its entirety in the Disputed Domain Name, and is apparently using the Disputed Domain Name in connection with a phishing scheme. It is therefore inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007). The fact that specialized search engines contain warnings that the Disputed Domain Name is used for phishing purposes suggests that the Disputed Domain Name has been used in bad faith.

Additionally, by using a proxy registration service and possibly using the account information from a hacked Microsoft Exchange account, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct). Therefore, the Panel considers that the inference of bad faith is strengthened, in light of the cumulative circumstances indicating bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, supra).

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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 <secured-recipharm.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: October 9, 2019