Complainant is Ferring B.V., Netherlands, represented by Jacobacci Avocats, France.
Respondent is Domain Administrator, Fundacion Privacy Services LTD., Panama.
The disputed domain name <ferringcsod.com> (the “Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2021. On March 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on March 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2021.
The Center appointed Ms. Perraki as the sole panelist in this matter on April 20, 2021. 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.
Complainant is part of the Ferring group, a biopharmaceutical group, leader in reproductive medicine and women’s health. Founded in 1950, Complainant’s group owns subsidiaries operating in almost 60 countries and markets its products in 110 countries. Complainant’s group has R&D centres in Brazil, China, Denmark, India, Israel, Japan, Russian Federation, United Kingdom, Switzerland, and the United States of America. In-house production is carried out in Argentina, China, the Czech Republic, Denmark, Germany, India, Israel, Mexico, Switzerland, United Kingdom, and the United States of America. Complainant’s group global turnover was in 2019 more than EUR 2 billion. Complainant’s products are sold under the trademarks FERRING and FERRING PHARMACEUTICALS.
Complainant is the owner of numerous FERRING trademark registrations around the world including:
- International trademark registration No 615597, FERRING (word), registered on February 18, 1994, for goods in international classes 5 and 10;
- European Union trademark registration No 4030193, FERRING (word), filed on September 16, 2004 and registered on September 11, 2006, for goods in international classes 5 and 10; and
- United States trademark registration No 76678965, FERRING (word), filed on July 2, 2007 and registered on August 4, 2009, for goods in international class 5.
Complainant is also the owner of a large portfolio of domain names, including <ferring.com> used for its primary website.
The Domain Name was registered on December 11, 2020, and redirects to different websites at different times, including websites of third parties offering for sale different goods and services unrelated to Complainant, websites with pay-per-click (“PPC”) content, suspicious websites, and sites offering the Domain Name for sale. Furthermore, as Complainant demonstrated, “CSOD” stands for “Cornerstone On Demand”, which is a software solution offered by the company Cornerstone OnDemand, Inc. of which Complainant is a client. The said software solution is a platform used by Complainant for its human resources and employee’s management. For logging in the platform, Complainant uses the address “ferring.csod.com”.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Complainant has demonstrated rights through registration and use on the FERRING mark.
The Panel finds that the Domain Name is confusingly similar with the FERRING trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the letters “csod” in the Domain Name does not prevent a finding of confusing similarity as the FERRING mark remains clearly recognizable (WIPO Overview 3.0 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
The Panel finds that the Domain Name is confusingly similar to the FERRING trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, the Domain Name is used to redirect to third party websites and/or, as Complainant demonstrated, at the time of filing of the Complaint, it was used to redirect to websites suspicious for phishing or malware distribution, to websites used to host PPC pages and/or where the respective Domain Name was being offered for sale.
The Panel finds that it is not unlikely that Respondent received PPC fees from the linked websites that were listed at the Domain Name’s websites and used the Domain Name for its own commercial gain. The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with complainant’s trademark (Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; WIPO Overview 3.0, section 2.9).
Furthermore, there is no evidence on record giving rise to any rights or legitimate interests in the Domain Names on the part of Respondent within the meaning of paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
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 Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Names, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the FERRING mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the FERRING mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
The Domain Name was therefore operated by intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the websites it resolved to. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).
Furthermore, the Domain Name is almost identical with the address used by Complainant to enter into the platform it uses for its human resources and employee’s management at “www.ferring.csod.com”.
As regards bad faith use, the Domain Name redirected at times to websites displaying links to third party websites, which suggests that, presumably, Respondent received PPC fees from the linked websites that were listed thereon. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).
Furthermore, at times the Domain Name was being offered for sale. This, in view of the finding that Respondent has no right to or legitimate interest in the Domain Name, and in the circumstances of the case, affirms the bad faith (Aygaz Anonim Sirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1).
In addition, at times the Domain Name directed to suspicious websites. Use of a domain name for phishing, identity theft, or malware distribution may constitute bad faith (WIPO Overview 3.0, section 3.4).
The Panel considers also the apparent concealment of the Domain Names holder’s identity through use of a privacy shield (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364).
Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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, <ferringcsod.com>, be transferred to Complainant
Marina Perraki
Sole Panelist
Date: May 4, 2021