The Complainant is Adventia Pharma, S.L., Spain, represented by Núñez, González & Rodríguez, S.L.P., Spain.
The Respondent is Super Privacy Service LTD c/o Dynadot LLC, United States of America / bilal bal, Turkey.
The disputed domain name <permeacare.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2020. On June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 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 June 26, 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 June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020.
The Center appointed David H. Bernstein as the sole panelist in this matter on July 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.
The Complainant is a pharmaceutical laboratory located in the Canary Islands that specializes in the development, manufacture and marketing of high-quality food for special medical uses. The Complainant’s line of business focuses on clinical nutrition, radiation oncology, bariatric surgery, gynecology, digestive and weight management.
The Complainant is the sole owner of the European Union trademark PERMEACARE. On September 23, 2019, the Complainant duly filed the application to register the PERMEACARE trademark with the European Union Intellectual Property Office (“EUIPO”), which was granted on January 24, 2020, under registration no. 018128014.
The Respondent registered the Domain Name on September 23, 2019.
The Complainant asserts that, by virtue of its European trademark registration, it has trademark rights in PERMEACARE, and that the Domain Name is identical to its trademark. It also contends that the available evidence suggests the Respondent registered the Domain Name with the sole intent to sell it to the Complainant. In particular, the Complainant points to the fact the Domain Name was registered the same day as the Complainant filed its application for PERMEACARE with the EUIPO, which application would have been publicly disclosed on the same day, and that the only content available when browsing the Domain Name is a redirect to a website offering the Domain Name for sale.
The Respondent did not reply to the Complainant’s contentions.1
Paragraph 4(a) of the Policy lists the three elements that the Complainant must prove by a preponderance of the evidence in order to obtain transfer of the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Complainant has demonstrated rights in the PERMEACARE trademark through its registration in the EUIPO.
The Domain Name is identical to the Complainant’s PERMEACARE trademark given that the Domain Name incorporates the trademark in its entirety. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 (“in cases where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”).
The Panel therefore finds that the Complainant has established that the Domain Name is identical to a trademark in which the Complainant has rights.
Demonstrating that a respondent has no rights or legitimate interests in a domain name requires the complainant to prove a negative, which can be challenging if only the respondent is aware of its intentions with respect to the domain name and its claim of rights or legitimate interests. For that reason, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production [...] shifts to the respondent”. WIPO Overview 3.0, section 2.1. The burden of proof, however, always remains on the Complainant. Id.
Where a complainant presents evidence showing the respondent’s likely purpose in registering the domain name is an illegitimate one, that is sufficient to establish a prima facie case that the respondent has no rights or legitimate interests in a domain name.
The Complainant has presented evidence that supports an inference that the Respondent likely registered the Domain Name for the purpose of selling it the Complainant. In particular, the Complainant has established that the Respondent registered the Domain Name on the same day that the Complainant submitted its application to register its PERMEACARE mark in the EUIPO. Given the highly suspicious timing of the registration of the Domain Name coupled with the lack of any response, the clear inference is that the Respondent was monitoring the European Union trademark filings, which are publicly available, and sought to capitalize on the Complainant’s choice to register its new brand prior to securing a corresponding domain name. This theory is supported by the fact that the Domain Name redirects visitors to a page offering to sell the Domain Name. Moreover, as of August 10, 2020, the price offered was USD 990, which is notable as it is far in excess in the registration fee for a “.com” domain name, but meaningfully below the USD 1,500 the Complainant was required to expend as a filing fee to initiate this administrative proceeding. In other words, it is a price that an actor looking to extort the Complainant would charge since it is profitable for the Respondent but appealing to the Complainant even in light of the Complainant’s legal right to secure the Domain Name through these administrative proceedings. In light of all these facts, the Complainant has made a prima facie showing that the Respondent had no right or legitimate interest in the Domain Name.
The Panel has considered whether there is other evidence in the record that might be inconsistent with this inference. There is nothing available on the website or in the record that could support a counter-inference that the Respondent is making a bona fide offering of goods or services under the Domain Name, has been commonly known by the Domain Name, or is making a legitimate noncommercial or fair use of the Domain Name.
The Respondent has not submitted any Response. As such, the Complainant’s prima facie showing is unrebutted.
The Panel therefore finds that the Complainant has established that the Respondent lacks rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
As noted above, the Complainant’s evidence supports an inference that the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant for valuable consideration in excess of its documented out of pocket costs. Such conduct is paradigmatic bad faith and abusive cybersquatting under the Policy.
The Complainant points to the history of UDRP proceedings against Respondent Super Privacy Service LTD c/o Dynadot LLC to show a pattern of bad faith conduct. Although it is true that over 100 such disputes have been initiated, there is no evidence in the record to suggest that Respondent Super Privacy Service LTD c/o Dynadot LLC is anything other than a proxy service that held the Domain Name for the beneficial interest of the ultimate owner, Respondent bilal bal. Although a proxy or privacy service that is actively engaged in cybersquatting may well be found responsible for a pattern of bad faith conduct, see generally WIPO Overview 3.0, section 4.4.5, there is no evidence in this record to support a finding that Respondent Super Privacy Service LTD c/o Dynadot LLC is responsible for the bad faith conduct shown in this case.
But a pattern of conduct is not required for a showing of bad faith under the Policy where that bad faith is based on a intent to sell the disputed domain name to a specific trademark rights holder. As noted above, the Respondent’s registration of the Domain Name on the same day that the Complainant applied to register its identical PERMEACARE trademark strongly suggests an intentional desire by the Respondent to secure the Domain Name for the purposes of selling, renting, or otherwise transferring the Domain Name to the Complainant. Because the only known use of the Domain Name has been to redirect to a webpage selling the Domain Name for an amount almost certainly in excess of the Respondent’s out of pocket costs, it is more likely than not the Domain Name was registered and is being used in bad faith pursuant to paragraph 4(b)(1) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <permeacare.com> be transferred to the Complainant.
David H. Bernstein
Sole Panelist
Date: August 11, 2020
1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligations to give the Respondents fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. In an attempt to provide notice to the Respondents, the Center sent notification of the Complaint to the Respondents via email and (DHL) courier. Respondent Super Privacy Service LTD also was sent the Complaint via fax. The Center did not attempt to send notice by fax to Respondent bilal bal because bilal bal did not provide any fax number in the available contact information. The Center’s email appears to have been delivered to both Respondents. Respondent Super Privacy Service LTD provided acknowledgement to its receipt of the initial complaint, but the Center did not receive any acknowledgment from Respondent bilal bal. The courier package sent to Super Privacy Service LTD was delivered, but the courier sent to Respondent bilal bal could not be delivered because the address that bilal bal provided was not a valid address. Although it is not clear whether the Respondent bilal bal received actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.