WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virbac v. TideWater Services Inc.

Case No. D2014-1931

1. The Parties

The Complainant is Virbac of Carros, France, represented by WITETIC, France.

The Respondent is TideWater Services Inc. of Las Vegas, Nevada, United States of America.

2. The Domain Names and Registrar

The disputed domain names <virbac-discount.com> and <virbacdiscount.com> are registered with TierraNet d/b/a DomainDiscover (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2014. On October 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 31, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2014.

The Center appointed David Williams as the sole panelist in this matter on December 18, 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.

4. Factual Background

The Complainant, a French company in the animal health industry, has been registered under the French Trade Register since April 12, 1973. It was founded in 1968 and currently operates in over 100 countries, ranking as the eighth largest animal healthcare company worldwide. Unsurprisingly, it has many registered trademarks globally. It also uses a range of domain names containing “virbac”. The VIRBAC brand also has some wider exposure through various sponsorship agreements.

The Respondent, TideWater Services Inc., reserved two domain names on June 25, 2014: <virbac-discount.com> and <virbacdiscount.com>. Both are registered with TierraNet. The Respondent has taken no part in these proceedings.

The Complainant emailed the Respondent on August 6, 2014 requesting that the aforementioned domain names be immediately deleted or transferred to it. The Complainant also put the Respondent on notice that if it did “not proceed accordingly” it would claim its rights “before WIPO according to the UPDR by filing a complaint”. The Complainant, receiving no response, then sent two follow up e-mails, dated August 26, 2014 and September 3, 2014.

As matters stand currently, the Respondent has not made any contact with the Complainant.

5. Parties’ Contentions

A. Complainant

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant indicates that it has a wide range of trademark registrations for VIRBAC, “alone or combined with another element, throughout the World”. Accordingly, it asserts that:

“[…] the contested domain names include and reproduce, identically and entirely, the term VIRBAC that corresponds to the Complainant’s trademark and other protected Intellectual Property rights together with the non-distinctive and generic and tarnishing term ‘discount’”.

Further, it alleges that the suffix “discount” does nothing to dispel and serves only to reinforce the connection in the public mind between Virbac and the Complainant, and therefore increases the risk of confusion.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant alleges that the Respondent has “no rights or legitimate interest in respect of the domain names at stake since it has no prior rights, as trademarks or corporate/trade name, on the Complainant’s trademarks”. As such, the Complainant charges the Respondent with “opportunistic bad faith” in light of the following factors: (i) the Respondent is not an authorized seller of VIRBAC products; (ii) the Respondent has reproduced VIRBAC trademarks, and those of its competitors, on its websites; (iii) the Respondent was notified of Virbac’s rights by emails of August 8, 2014 and August 26, 2014; and (iv) in light of these factors, the Respondent is using the disputed domain names to build its online retail business.

Further, the Complainant alleges that the Respondent sought to “alternatively or cumulatively” divert traffic away from the Complainant’s websites or prevent the Complainant from taking ownership of the disputed domain names.

(iii) The domain names were registered and are being used in bad faith.

The Complainant asserts that the Respondent’s conduct falls within the meaning of “bad faith”, as used in paragraph 4(a)(iii) of the Policy. Essentially, the Complainant contends that the Respondent’s pattern of conduct and intention to “attract or collect information from internet users for commercial gain and … [disrupt] the business of the Complainants” amounts to bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy allows a complaint on the ground that “[the Respondent’s] domain name is similar or confusingly similar to a trademark or service mark in which the complainant has rights”.

The Complainant contends, and the Panel accepts, that it is “the owner of numerous domain names composed of the term Virbac alone or combined with another element.” Useful examples of this include the domain names <virbac.com> and <virbaccorp.com>. As is plain, the disputed domain names use “virbac” with the suffix “discount”—either directly following “virbac” or separated by a hyphen.

The Panel is of the view that the disputed domain names are confusingly similar to the group of trademarks under the Virbac umbrella. Here, the suffix “discount” is employed apparently to distinguish the Respondent’s websites from those officially affiliated with Virbac. The Panel does not accept this distinction has been made out. UDRP cases continue to affirm that prefixes or suffixes generally do not dispel the connection to the original trademark; if anything, they reinforce it (see, for example, Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462 (August 5, 2004); Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003); and Harrods Limited v. Discount-Harrods, WIPO Case No. D2006-1065 (October 20, 2006)).

The following reasons support the Panel’s conclusion that the disputed domain names are confusingly similar:

- Adding the suffix “discount” does nothing to dispel the similarity with the VIRBAC trademark. The similarity with the VIRBAC trademark is particularly plain in the disputed domain name <virbac-discount.com>, as the hyphen accentuates the use of “virbac”;

- The disputed domain names are especially likely to be confused with the VIRBAC trademark given that it appears to be the Complainant’s practice to employ adjectives or suffixes with the “virbac” name, such as was done with the <virbaccorp.com> domain name; and

- The suffix of “discount” reinforces the perceived connection with the Complainant and it certainly does not dispel the connection.

As such, the Panel finds the disputed domain names are confusingly similar to the VIRBAC trademark.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) provides a ground for complaint when the Respondent “[has] no rights or legitimate interests in respect of the domain name”. Paragraph 4(c) of the Rules outline three relevant factors that may assist a respondent in demonstrating its rights or legitimate interests, although they are not exhaustive. Paragraph 4(c) states that the respondent should demonstrate:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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. ”

Furthermore, previous UDRP decisions suggest a range of other considerations that are relevant to the Respondent proving its bona fides (for example, see Dr. Ing. H.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481). Quoting directly from Dr. Ing. H.c. F. Porsche AG v. Del Fabbro Laurent, these considerations include:

- A respondent must actually be offering the goods or services at issue;

- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;

- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;

- A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.

Finally, before considering the Policy requirements, the Panel notes that the previous UDRP decisions also emphasize that a respondent is unlikely to prove bona fides when intentionally infringing a valid trademark by its incorporation into a domain name (Paule Ka v. Paula Korenk, WIPO Case No. D2003-0453).

The following factors make it plain that the Respondent has no rights or legitimate interests in the disputed domain names:

- The Respondent is not an authorized seller of the Complainant’s products, despite using its name, trademarks and products on its websites. The Respondent could not rely on paragraph 4(c)(i) of the Policy because before notice of the dispute it was selling these products without authorization and also sold competitors’ products;

- Nothing suggests that “virbac” has any relationship to the Respondent’s name, which makes it impossible for it to rely upon being commonly referred to by that name per paragraph 4(c)(ii) of the Policy; and

- It can be inferred that the Respondent is using the term “virbac” in the disputed domain names with the suffix “discount” to lure clients to its websites under the guise of the VIRBAC trademark, only to then offer a range of products, some of which are not produced by the Complainant. It can be inferred that the Respondent has sought to take advantage of that trademark to create confusion and promote its own commercial advantage.

Accordingly, the Respondent has no rights nor legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant also alleges that the Respondent has registered and used the disputed domain names in bad faith pursuant to paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy outlines, again non-exhaustively, four circumstances that “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These four examples are set out in full:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. ”

In the Panel’s view, the Respondent’s conduct falls under paragraphs 4(b)(iii) and 4(b)(iv).

First, the disruption of business point: The Complainant must prove the primary reason for the disputed domain names was to disrupt, in this case, its business. The Respondent has used “virbac” in the disputed domain names, and sold VIRBAC products and competitors’ products without being an authorized seller. Based on the available record, it is plain that the Respondent has sought to use the VIRBAC trademarks to attract customers to its websites, thereby disrupting the Complainant’s business.

Secondly, the Respondent must have used the trademark for its own commercial gain by creating the likelihood of confusion that the Respondent has some legitimate connection to the Complainant—which it does not. This is particularly concerning in respect of the VIRBAC products being sold that may fall foul of the relevant regulations. This is justifiably concerning for the Complainant, whose brand may be at risk if its products are sold in breach of regulatory prohibitions.

To conclude, the Panel is satisfied that the Respondent has registered and used the disputed domain names in bad faith. While the Respondent defaulted and could not provide evidence to the contrary, these implications can be drawn from the available evidence.

7. Decision

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 names <virbac-discount.com> and <virbacdiscount.com> be transferred to the Complainant.

David Williams
Sole Panelist
Date: December 23, 2014