The Complainant is Vifor (International) Ltd., Switzerland, internally represented.
The Respondent is chaiming ming, China.
The disputed domain name <diaphocal.com> (the “Disputed Domain Name”) is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 15, 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 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an email on November 30, 2021, stating that it would not submit an amendment to the Complaint1.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.
The Center appointed Lynda M. Braun as the sole panelist in this matter on January 19, 2022. 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 listed in this proceeding is Vifor (International) Ltd., a global pharmaceutical company. According to the 2020 Annual Report submitted as an Annex to the Complaint, the Vifor Pharma Group wholly owns the Complainant Vifor (International) Ltd., and also owns 55% equity in the Complainant Vifor Fresenius Medical Care Renal Pharma, which in turn wholly owns the Complainant Fresenius Medical Care Nephrologica Deutschland GmbH, which is the listed owner of the trademarks in this proceeding. Based on the above, the Complainant has requested that the three Complainants be consolidated for purposes of this proceeding. The Panel discusses this matter below.
The registered trademark owner, Vifor Fresenius Medical Care Nephrologica Deutschland GmbH, owns dozens of trademarks in numerous jurisdictions worldwide, among others, DIA-PHOCAL, Brazilian Trademark Registration No. 83034094, registered on March 4, 2012, in international class 41; and German Trademark Registration No. 302008056979, registered on September 18, 2008, in international classes 9, 41 and 44 (hereinafter collectively referred to as the “DIA-PHOCAL Mark”).
The Disputed Domain Name was registered by the Respondent on March 23, 2021. At the time the Complainant submitted its Complaint, it alleged that the Disputed Domain Name showed no evidence of use. At the time of the writing of this Decision, however, the Panel finds that the Disputed Domain Name resolves to a website in Chinese that contains pornography. The Chinese website is consistent with the Respondent’s alleged residence in China.
The following are the Complainant’s contentions:
- the multiple Complainants should be consolidated;
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.
Regarding a remedy, the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11, the consolidation of multiple complainants filing a joint complaint against one or more respondents is subject to the discretion of the appointed panel.
In assessing whether a complaint filed by multiple complainants may be brought against one or more respondents, the appointed panel should consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
While the heading of the Complaint only includes Vifor (International) Ltd., the section of the Complaint about the Complainant refers to multiple entities (i.e. the Complainant “Vifor (International) Ltd.”, the Complainant “Vifor Fresenius Medical Care Renal Pharma (VFMCRP)”, the Complainant “Fresenius Medical Care
Nephrologica Deutschland GmbH”), and provides arguments for the consolidation of multiple complainants.
Keeping this in mind, the Panel notes that the Complainants in the present administrative proceeding are affiliated and members of the same company group. As stated above, Vifor Pharma Group wholly owns the named Complainant Vifor (International) Ltd., and also owns 55% equity in the Complainant Vifor Fresenius Medical Care Renal Pharma, which in turn wholly owns the Complainant Vifor Fresenius Medical Care Nephrologica Deutschland GmbH, the owner of the trademarks in this proceeding. Thus, the companies are under common control. Additionally, the Complaint is based on the same set of facts that affect those three companies. As noted below, the Respondent appears to have engaged in conduct targeting a trademark held by the parent of the other companies. As such, the Complainant companies have a specific common grievance against the Respondent. The Panel is not aware of any circumstances that would create prejudice to the Respondent by allowing the Complaint to proceed.
Therefore, subject to the Panel’s discretion, the Panel concludes that it is fair and equitable under the circumstances of the case to permit the consolidation, as the Complainants are not only affiliated companies with a related company name, but also have common interests.
Consequently, the Panel allows the Complainants to proceed jointly with their Complaint. The consolidated Complainants will hereinafter be referred to as “the Complainant”.
Paragraph 4(a)(i) of the Policy requires a two-fold inquiry, a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the DIA-PHOCAL Mark.
It is uncontroverted that the Complainant has established rights in the DIA-PHOCAL Mark based on its years of use as well as its numerous registered trademarks for the DIA-PHOCAL Mark worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the DIA-PHOCAL Marks.
The Disputed Domain Name consists of the DIA-PHOCAL Mark in its entirety, except omitting the hyphen, followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition (or omission) of other terms. See WIPO Overview 3.0, section 1.8.
Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the omission of a dash or hyphen. In cases involving slight differences in punctuation or spelling, UDRP panels regularly find sufficient similarity to proceed to a consideration of the other Policy elements. See, e.g., Teva Pharmaceutical USA, Inc. v. Mode L, WIPO Case No. D2007-0369 (finding the domain name <adipexp.com> confusingly similar to the trademark ADIPEX-P because they are “pronounced in the same way despite the removal of the dash”). As stated in Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, “[p]anels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is ‘confusingly similar’ to the mark.”
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s DIA-PHOCAL Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s DIA-PHOCAL Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Based on the current use made of the Disputed Domain Name to resolve to a Chinese website offering pornography, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it, nor any evidence that the Respondent was making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c).
Finally, the composition of the Disputed Domain Name, comprising the DIA-PHOCAL Mark (or misspelled variation thereof without the dash or hyphen), carries a high risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case, and the Panel notes that especially without a plausible explanation being put forward by the Respondent (which in any event seems difficult to conceive), the use of the Disputed Domain Name presents a risk of tarnishment. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
The Respondent’s use of the Disputed Domain Name to resolve to a website offering pornographic content is a significant indicator of bad faith. See VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631; and CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008. Such conduct is known as “pornosquatting”, the practice whereby a trademark is used to divert customers to a pornographic website for commercial gain. See Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187. Here the Respondent created a Disputed Domain Name that incorporated the DIA-PHOCAL Mark, merely omitting the hyphen in the Disputed Domain Name, and had it resolve to a pornographic website to realize financial gain. Specifically, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its pornographic website by creating a likelihood of confusion with the Complainant’s DIA-PHOCAL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and thus generate revenue through the unauthorized use of the DIA-PHOCAL Mark. See WIPO Overview 3.0, section 3.1 and paragraph 4(b)(iv) of the Policy.
Moreover, in certain circumstances the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the available record, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s DIA-PHOCAL Mark for commercial gain.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <diaphocal.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: January 26, 2022
1 The Panel notes that the Complaint was filed against “unknown”, and the WhoIs provided as annexes to the Complaint did not disclose the registrant information for the Disputed Domain Name. Notwithstanding the Center’s notice of registrant information for the Disputed Domain Name, the Complainant elected not to amend the Complaint.
In light of the registrant information disclosed by the Registrar, noting the definition of “Respondent” in the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the general powers of the Panel under paragraph 10 of the Rules, the Panel finds that “chaiming ming”, shall be considered the holder of the Disputed Domain Name for the purpose of this proceeding. Therefore, the Panel will conduct its assessment of the substantive requirements prescribed by the Policy with respect to such person/entity.