WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Biofarma v. Dawn Mason

Case No. D2019-1952

1. The Parties

The Complainant is Biofarma, France, represented by IP Twins SAS, France.

The Respondent is Dawn Mason, United Kingdom (the “UK”).

2. The Domain Name and Registrar

The disputed domain name < daflonshop.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 August 12, 2019, 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 August 13, 2019.

The Center verified that the Complaint together with the amended 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 August 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 24, 2019. 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 is part of the Servier Group, a pharmaceutical group. DAFLON designates one of the Complainant’s products and has been registered, amongst others, as (Annex 7 to the Complaint):

- European Union trademark registration No. 010567592 for DAFLON registered on June 15, 2012, to cover products in class 05;

- International trademark registration No. 554961 for DAFLON registered on June 8, 1990, successively renewed, to cover products in class 05; and

- UK Trademark registration No. 00001021264 for DAFLON registered on November 26, 1973, and successively renewed, to cover products in class 05.

The disputed domain name <daflonshop.com> was registered on December 10, 2018. At the time of the filing of the Complaint, the disputed domain name was used to redirect Internet users to an online store offering the Complainant’s DAFLON products for sale, among other cosmetic and pharmaceutical goods (Annex 11 to the Complaint). Currently the disputed domain name resolves a parked page.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be part of the Servier Group, which the Complainant alleges is the largest French pharmaceutical group on an independent level, active in 149 countries which employs presently more than 22,000 people. The DAFLON trademark is used in connection with a product which treats symptoms of venous insufficiency and functional signs linked to haemorrhoidal episodes.

The Complainant further asserts that the disputed domain name, not taking into account the generic Top-Level Domain (“gTLD”) “.com”, combines its trademark with the generic word “shop”, which is insufficient to add distinctiveness and, as a consequence, the disputed domain name should be considered confusingly similar therewith.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) the Respondent is not commonly known by the disputed domain name;

(ii) there is no evidence that the Respondent holds any trademark rights on DAFLON, being the Complainant only able to locate trademark registrations for DAFLON under its own name or under the name of its affiliates (Annex 13 to the Complaint);

(iii) the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s trademark, and is not commercially linked to the Complainant;

(iv) the Respondent is using the disputed domain name to increase traffic to the online store available at <cremeofthecrop.co.uk> (the “Online Store”), to which Internet users were being directed at the time of the filing of the Complaint; not displaying on such Online Store the Complainant as the manufacturer of the DAFLON products which are available for purchase, which does not constitute a legitimate use of the disputed domain name according to the “Oki Data” test (Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903);

(v) the Online Store which appears to be based in the UK and sells medicines must fulfill the three conditions set by the UK Government, available at “https://www.gov.uk/guidance/register-for-the-distance-selling-logo”, i.e.: (a) to hold the necessary UK marketing authorization; (b) to be registered with the Medicines & Healthcare Products Regulatory Agency (MHRA) and (c) to showcase the “distance selling logo” on each webpage offering medicines for sale. The Online Store does not fulfill these conditions, nor is it referenced in the MHRA Online medicines seller registry (Annex 17 to the Complaint), which shows the absence of a legitimate interest from the Respondent in the disputed domain name.

Lastly, the Complainant contends, based on the use made of the disputed domain name, redirecting Internet users to the Online Store, that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name, being it in bad faith. In addition to that, the Complainant sent a cease-and-desist letter and reminders to the Respondent to which the Respondent never replied (Annexes 18 to 22 to the Complaint), which makes the continued use of the disputed domain name as a bad faith use given that the Respondent had been made aware of the Complainant’s rights. Furthermore, the reputation of the Complainant’s trademark makes it implausible to imagine any good faith use of the disputed domain name by the Respondent. Lastly, the Complainant notes that the Online Store does not provide information about its publisher, which should be considered as another indicator of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the DAFLON trademark, duly registered in several countries around the world.

The disputed domain name, <daflonshop.com>, reproduces the Complainant’s trademark entirely with the addition of the dictionary term “shop”. As the Complainant’s trademark is recognizable within the disputed domain name, the addition of this term does not prevent a finding of confusing similarity.

The first element of the Policy has therefore been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, 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; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) 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.

The Respondent, in not responding to the Complainant’s contentions, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules.

As the evidence submitted clearly indicates, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, given that the Respondent has used the disputed domain name to redirect Internet users to an Online Store which sells medicines.

This Online Store, which appears to be based in the UK, does not seem to follow that country’s requirements (Annex 17 to the Complaint), does not provide information about its publisher (Annexes 24 to 28 to the Complaint), and fails to indicate the Complainant as the manufacturer of the DAFLON products which are available for purchase, which does not constitute a legitimate use of the disputed domain name according to the “Oki Data test”, see section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):

“2.8.1 Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”

Given that at least the requirements of (ii) and (iii) were not present, and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation, see section 2.5.1 of the WIPO Overview 3.0.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith can be found by using the disputed domain name, if a respondent 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 website or location or of a product or service on the website or location.

In this case, the use of the disputed domain name to redirect Internet users to the Online Store that sells the Complainant’s products as seen above characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers in view of the association with the Complainant’s trademark.

Other factors that corroborate with the Panel’s finding of bad faith of the Respondent are:

a. the “Terms and Conditions” and the “Privacy Policy” on the Respondent’s website consist of pro forma documents lacking any specific information about the Respondent or the services offered via the Respondent’s website;

b. the Respondent’s failure to reply to the Complainant’s cease-and-desist letter and reminders sent prior to this procedure; and

c. the reputation of the Complainant and its DAFLON trademark which make difficult to conceive a good faith use of the disputed domain name to be made by the Respondent.

Moreover, as previously noted, the disputed domain name carries a risk of implied affiliation.

For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

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 name, <daflonshop.com>, be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: October 7, 2019