The Complainant is Laboratoires Théa, France, represented by AARPI Scan Avocats, France.
The Respondent is Contact Privacy Inc. Customer 0162916749 / Milen Radumilo, Romania.
The disputed domain name <anutrof.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2021, 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 November 8, 2021 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 November 9, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on November 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2021.
The Center appointed Ian Blackshaw as the sole panelist in this matter on December 14, 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.
The Complainant is a leading European company in the field of ophthalmology resulting from its investment in Research and Development for many years.
The Complainant is dedicated to eye care, offering a complete portfolio of products, both preventive and curative, in the areas of diagnosis, surgery and therapeutics, ranging from well-known classics to innovative products, amongst which is the product sold under its registered trademark NUTROF.
The Complainant is the owner of the following registered trademarks that have been used in commerce for a food supplement in numerous countries:
- NUTROF, European Union word mark no. 2044030 filed on January 16, 2001, and registered for products in classes 3 and 5 (duly renewed);
- NUTROF, French word mark no. 07/3477674 filed on January 29, 2007, and registered for products in class 5 (duly renewed);
- NUTROF, international word mark no. 931136 filed on July 6, 2007, and registered for products in class 5 (duly renewed);
The Complainant has also registered numerous domain names, including <nutrof.com> and <nutrof.fr> registered in 2006.
Evidence of these registrations has been provided to the Panel.
The disputed domain name was registered on October 21, 2021. At the time of filing the Complaint, the disputed domain name resolved to a pay-per-click (“PPC”) website.
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant makes the following assertions.
Firstly, the disputed domain name is confusingly similar to its NUTROF registered trademarks and domain names as it identically reproduces the name “Nutrof’.
Furthermore, the only addition of the first letter “A” to the Complainant’s NUTROF trademarks in the disputed domain name is insufficient to prevent it from being confusingly similar to its prior trademarks.
Previous UDRP panels have constantly recognized that the addition of the first letter “A” to a complainant’s trademark is not a distinguishing feature, does not prevent a finding of confusing similarity and is a case of typosquatting.
See Fenix International Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3447, regarding <aonlyfans.com> and <bonlyfans.com>; Confédération Nationale Du Crédit Mutuel v. Fabienne Quintin, WIPO Case No. D2020-3493, regarding <acredit-mutuel.com>; and Laboratoires Thea v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-0412, regarding <nutrofs.com>.
Secondly, the addition, for technical reasons, of the “.com” generic top-level domain (“gTLD”) at the end of the disputed domain name is irrelevant in comparing the signs at issue.
Indeed, previous UDRP Panels have constantly stated that the addition of the “.com” gTLD is irrelevant to the determination of whether the domain name is identical or confusingly similar to a Complainant’s trademark. See Tetra Laval Holdings & Finance S.A. v. David Barr, WIPO Case No. D2017-0742, regarding the domain name <tetrapak-eu.com>, and Berlitz Investment Corporation v. Whois Privacy Services Pty Ltd, Domain Hostmaster / Lisa Katz, Domain Protection LLC, WIPO Case No. D2016- 2112, regarding the domain name <bertlitz.com>.
With regard to the above-mentioned elements, the Complainant claims that the disputed domain name registered by the Respondent is confusingly similar to its prior NUTROF registered trademarks and domain names.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
To the Complainant’s best knowledge, the Respondent is not currently and has never been known under the name of “Nutrof”.
The Complainant has never given any authorization to any third party to register or to use its NUTROF registered trademarks.
The Complainant has ascertained that the Respondent is not in any way related to its business and does not carry out any activity for or has any business with it.
In particular, the Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the “NUTROF” registered trademarks or to register any domain name incorporating these prior trademarks, nor has the Complainant acquiesced in any way to such use or registration of the “NUTROF” registered trademark by the Respondent. See Archer-Daniels-Midland Company/Tao bang hua, WIPO Case No. D2016-0990.
The disputed domain name was registered and is being used in bad faith.
The choice of the term “nutrof”, which is distinctive and arbitrary as it is a created word that has no meaning in French nor the English language, cannot have been made randomly by the Respondent. Indeed, it is highly likely that the Respondent knew of the existence of the Complainant’s prior intellectual property rights at the time the disputed domain name was registered for at least the following reasons:
(i) The Complainant’s registered trademarks have been used for many years before the disputed domain name was registered;
(ii) The Complainant’s domain names <nutrof.com> and <nutrof.fr> have been registered in 2006, before the disputed domain name ;
(iii) The disputed domain is confusingly similar to the Complainant’s “UTROF prior rights mark;
(iv) It is highly unlikely that the Respondent’s choice to register a domain name similar to the Complainant’s marks was purely coincidental;
(v) The mere absence of rights or legitimate interests in the disputed domain name indicates that the disputed domain name has not been used in good faith;
(vi) The registration and use of a domain name which is evidently connected with a well-known trademark, by someone with no connection with that trademark, suggests opportunistic bad faith (see Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited,
WIPO Case No. D2007-1641).
It is, therefore, highly unlikely that the Respondent was unaware of the existence of the Complainant and its well-known reputation and registered NUTROF trademarks, when it registered the disputed domain name.
Therefore, registering the disputed domain name including the NUTROF registered trademarks cannot be considered accidental and proves that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor, for valuable consideration in excess of the Complainant’s costs, which is a proof of bad faith.
The disputed domain name is used to redirect Internet users to a parking page with links directly related to the Complainant’s activity (diabetic eye disease symptoms, VSP eyeglasses online, thyroid eye disease ted, eye drop for dry eye, etc.). Meanwhile, the disputed domain name is also used, notably in France, to redirect Internet users to another parking page with links directly related to the Complainant’s activity, in French (DMLA, Laboratoire, Pharmacie, Complement alimentaire etc.).
See also Laboratoires Thea v. Domain Administrator, Fundacion Privacy Services LTD, WIPO Case No. D2021-0412; Accenture Global Services Limited v. Contact Privacy Inc. Customer 0157756560, WIPO Case No. D2020-1507; and Baring Asset Management Limited v. Jibril Shehu, WIPO Case No. D2020-1733. In all these cases, the Respondent was found by previous UDRP Panels to have registered and used in bad faith the respective disputed domain names as they resolved to a parking page.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP decisions in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140.
In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s well-known and widely used NUTROF registered trademark and this makes the disputed domain name confusingly similar to the Complainant’s well-known and widely used NUTROF registered trademark.
The addition of the letter “a” to the disputed domain name does not prevent a finding of confusing similarity. See Gannett Co, Inc. v. Henry Chan, WIPO Case No. D2004-0117.
Furthermore, the addition of the gTLD” “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s well-known and widely used NUTROF registered trademark; this being a standard registration requirement of domain names. See Blue Sky Softwa re Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely used NUTROF registered trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, prior rights in and prior commercial use of.
The first element of the Policy, therefore, has been met.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether 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 trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done so, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and widely used NUTROF registered trademark. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and widely used NUTROF registered trademark, which the Panel considers, as asserted above by the Complainant, would appear not to be by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services.
Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known and widely used NUTROF registered trademark and also the valuable goodwill that the Complainant has established in that trademark through the Complainant’s prior commercial use, without any rights or justification for doing so.
Also, the Panel finds no evidence that the Respondent has used or undertaken any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services. The use of the confusingly similar disputed domain name to resolve to a parking page with links to competitors of the Complainant does not constitute a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] website or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name confusingly similar to the Complainant’s well-known and widely used NUTROF registered trademark, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.
Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by, or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided on the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance; but, as noted above, the Respondent appears to have been – or, at least, should have been – fully aware of the notoriety of the Complainant and its worldwide business activity, as well as its well-known and widely used NUTROF registered trademark and its prior commercial use.
Furthermore, the use of the confusingly similar disputed domain name to resolve to a parking page with links to competitors of the Complainant constitutes bad faith within the context of paragraph 4(b)(iv) of the Policy.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent in the circumstances of this case. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account, and for all the above-mentioned reasons, as well as the arguments advanced by the Complainant in its contentions, as set out above, especially using the disputed domain name as a parking page connecting to the Complainant’s competitors’ websites, and also based on the previous UDRP cases cited by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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 <anutrof.com> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Date: December 18, 2021