The Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
The Respondent is Christopher Gill of Richfield, Minnesota, United States of America / Domain Privacy Service FBO Registrant, Bluehost.com, Bluehost Inc of Provo, Utah, United States of America.
The disputed domain name <magneb6.com> is registered with FastDomain, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2014. On June 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2014, 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 July 4, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on July 7, 2014.
The Center verified that the Complaint together with the amendments 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2014. The Response was filed with the Center on July 14, 2014.
The Center appointed Michael J. Spence as the sole panelist in this matter on August 8, 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, paragraph 7.
With consolidated net sales of over 32 billion Euros, the Complainant is the fourth largest multinational pharmaceutical company in the world. The Complainant owns trade marks consisting of the term "magneb6" under which it markets its most popular over the counter product, a pharmaceutical supplement used to treat magnesium deficiencies. The Respondent runs a company marketing illuminated sports equipment and bought the disputed domain name with the intention of using it for that purpose, given the intensity of the light emitted by burning magnesium. The Respondent decided not to use the disputed domain name to promote his products. When the Respondent discovered the existence of the Complainant's trade marks, it used the disputed domain name for a website on which it offered information about the Complainant's product and links for the purchase of the Complainant's product and also products competing with it. This site was operating for four and a half years when the Respondent offered to sell the disputed domain name to the Complainant.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trade marks; that the Respondent has no rights or legitimate interests in the disputed domain name as its only use has been for a website offering links for the sale of products competing with those of the Complainant; and that its registration or use has been in bad faith. Bad faith is said to be evinced in this case by the sale of goods competing with those of the Complainant, exploiting the confusion entailed in the use of the disputed domain name, and an offer to sell the disputed domain name to the Complainant for USD 2,000.
The Respondent admits that the disputed domain name is identical to the Complainant's trade marks; that it acquired the disputed domain name for the legitimate purpose of promoting its sporting goods and has operated the site for five years as an information blog; and that it had not acquired the disputed domain name, or continued to use it, in bad faith. The Respondent claims that its offers to sell the disputed domain names were simply an attempt to recover its legitimate costs associated with registration and maintenance of the disputed domain name.
The Respondent has conceded that the disputed domain name is identical to the Complainant's trade marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the only use that has been made of the disputed domain name is for a website containing links offering, not only the products of the Complainant for sale, but also those of competitors of the Complainant. Given the strong reputation of the Complainant's trade marks, the fact that the website contains commentary on the Complainant's products, and therefore the strong likelihood that consumers will be confused into thinking that there is a link between the Complainant and the Respondent, such use cannot be such as to give rise to rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the UDRP Policy.
Neither the registration of the disputed domain name, nor the offer for sale to the Complainant may be taken clearly to constitute bad faith in this case. The Respondent has offered what may be plausible explanations of both the registration and offer for sale that would not constitute bad faith. Nevertheless, the ongoing use of the disputed domain name for the Respondent's website with the intention to profit from the use of the disputed domain name in a context in which it must have been known to be likely to cause confusion, and without any attempt to distinguish the Respondent from the Complainant, is itself sufficient to constitute evidence of bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the UDRP Policy.
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 <magneb6.com> be transferred to the Complainant.
Michael J. Spence
Sole Panelist
Date: August 22, 2014