The Complainant is BIOTHERM of Monaco, represented by Dreyfus & associés of France.
The Respondent is Wang Hui Huang of Chengdu, Sichuan, China.
The disputed domain name <biotherm.tm> is registered with NIC.TM (the "Registry").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 30, 2014. On May 30, 2014, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On May 30 and June 6, 2014, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 11, 2014, the Center notified the Complainant of deficiencies in its Complaint. The Complainant submitted an amended Complaint by email on June 13, 2014.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for Domain Names registered with NIC.TM (the "Policy"), the Rules for Domain Name Dispute Resolution for .TM Names (the "Rules of Procedure"), and the WIPO Arbitration and Mediation Center Supplemental Rules for Domain Name Dispute Resolution Policy for .TM Names (the "Supplemental Rules").
In accordance with the Rules of Procedure, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2014. In accordance with the Rules of Procedure, paragraph 5(a), the due date for Response was July 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 10, 2014.
The Center appointed Torsten Bettinger as the sole panelist in this matter on August 1, 2014. 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 of Procedure, paragraph 7.
Based on the uncontested statements made in the Complaint, the Complainant is a French brand founded in 1952 specialized in the conception and manufacture of skincare products. It has been present on the Chinese market since 2003. It owns Chinese Trademark No. 76631 for BIOTHERM, registered on December 2, 1988. It also provided evidence of its International Trademark Registration No. 198936 of March 4, 1957 for BIOTHERM. The Complainant also registered domain names incorporating the BIOTHERM mark, including <biotherm.com> registered on February 14, 1996 and <biotherm.com.cn>, registered on December 16, 2002.
The disputed domain name <biotherm.tm> was registered by the Respondent on December 27, 2013. The disputed domain name does not appear to have ever been used in association with an active website.
The Complainant alleges that all three required elements under the Policy have been satisfied in this matter.
Regarding the first element, the Complainant refers to its trademark registrations for BIOTHERM. The Complainant asserts that the disputed domain name <biotherm.tm> incorporates the BIOTHERM mark in its entirety, and is virtually identical to its mark except for the country-code Top-Level Domain (ccTLD) ".tm" which is not to be considered for purposes of the Policy. Thus the Complainant contends that the disputed domain name is identical or confusingly similar to Complainant's trademarks.
Under the second element, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Complainant asserts that the Respondent is not commonly-known by the Complainant's mark, nor is the Respondent authorized by the Complainant to use its mark in domain names. The Complainant further states that the Respondent has not made or demonstrated any preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
In connection with the third element, the Complainant argues that the Respondent has both registered and used the disputed domain name in bad faith. The Complainant contends that it is implausible that the Respondent was unaware of the Complainant at the time of the registration of the disputed domain name as the BIOTHERM mark is well-known around the world. The Complainant submits that the reproduction of its trademark in its entirety in the disputed domain name demonstrates the Respondent's awareness of the Complainant. The Complainant further asserts that although the disputed domain name is inactive, the Respondent's bad faith use of the disputed domain name is to be inferred from the circumstances of the Respondent's behavior.
The Respondent did not reply to the Complainant's contentions.
This Complaint has been brought under the Policy, which closely resembles the Uniform Domain Name Dispute Resolution Policy (UDRP). Accordingly, the principles developed by panels under the UDRP are relevant and instructive in many respects.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
The Complainant has clearly established its rights in the BIOTHERM mark by virtue of its trademark registrations duly submitted with its Complaint. These trademark registrations significantly pre-date the registration of the disputed domain name.
It is well established that a TLD suffix, in this instance the ccTLD suffix ".tm", is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Samsung Networks Inc. v. Stan Samsung Hui, WIPO Case No. DTM2009-0001; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Discounting the ccTLD suffix, the Panel finds that the disputed domain name <biotherm.tm> incorporates and exactly matches the Complainant's BIOTHERM mark in its entirety.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's trademark, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires that the complainant demonstrate that the respondent has no rights or legitimate interests in the disputed domain name. However, UDRP panels have recognized that this may require the complainant to prove a negative. Therefore, UDRP panels have found that for purposes of this element, the complainant is instead required to make out a prima facie case that the respondent lacks rights or legitimate interests, which would then shift the burden of production to the respondent. See paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). See also Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In the present matter, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the Respondent to use its BIOTHERM mark in the disputed domain name, nor is there any evidence that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence on record that would permit the Panel to consider that the Respondent has used or is undertaking preparations to use the disputed domain name in connection with a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use.
In the absence of any response from the Respondent, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
Pursuant to the Policy, the Complainant needs to establish that the Respondent either registered or used the disputed domain name in bad faith to establish this element. For the following reasons, the Panel considers that the Complainant has established both that the Respondent has registered and used the disputed domain name in bad faith.
The Panel is satisfied that the Complainant's BIOTHERM mark is widely known around the world, including in China where the Respondent is apparently located. The registration and use of the Complainant's marks in China significantly pre-date the registration of the disputed domain name, which reproduces the mark in its entirety. It is clear to the Panel that the Respondent was aware of and intentionally registered the disputed domain name incorporating the Complainant's mark.
From the evidence available to the Panel, it does not appear that the disputed domain name has ever been used in connection with an active website. The Complainant contends that the passive holding of the disputed domain name is evidence of the Respondent's bad faith. Although in some cases passive holding of a domain name may provide evidence of bad faith activity, it is necessary in every case to evaluate the issue in light of all the relevant facts and circumstances. Some of these key issues include whether: 1) the Complainant's mark has a strong reputation and is widely known, 2) there is any evidence of the Respondent's use of the disputed domain name in connection with a contemplated good-faith activity, 3) the Respondent has taken active steps to conceal its identity or provided false contact details, and 4) whether it is impossible to conceive of any good faith use of the disputed domain name by the Respondent which would not infringe the Complainant's rights. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, the Complainant has convinced the Panel that circumstances exist to satisfy each of these key passive holding factors. The Panel is convinced of the fame of the Complainant's mark, there is no demonstrable evidence that the Respondent has used the disputed domain name in connection with a possible good-faith activity, and it is impossible for the Panel to conceive of any good faith use of the disputed domain name by the Respondent. Furthermore, the physical contact and email information provided by the Respondent in its WhoIs records is incorrect, as evidenced by email and delivery records.
The Panel therefore concludes, on the totality of the circumstances, that the Respondent has both registered and used the disputed domain name in bad faith, satisfying the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(h) of the Policy and 15 of the Rules of Procedure, the Panel orders that the disputed domain name, <biotherm.tm> be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: August 14, 2014