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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Recipharm AB v. Oneandone Private Registration / Daniel Villa

Case No. D2019-2889

1. The Parties

The Complainant is Recipharm AB, Sweden, represented by Groth & Co KB, Sweden.

The Respondent is Oneandone Private Registration, United States of America / Daniel Villa, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <recipharm-se.com> is registered with 1&1 IONOS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2019. On November 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 2019, 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 December 6, 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 amendment to the Complaint on December 10, 2019.

The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2020.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 17, 2020. 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 a contract development and manufacturing organization, supporting pharmaceutical companies.

In addition, the Complainant is the owner of a number of registered trademarks for RECIPHRAM across multiple jurisdictions, including among others:

- RECIPHARM, European Union trademark registration, Registration No. 009029943, registered on September 28, 2010; and
- RECIPHARM, International trademark registration, Registration No. 1331103, registered on
August 17, 2016.

The Respondent registered the Disputed Domain Name on November 15, 2019. The Disputed Domain Name does not resolve to an active website. However, the Complainant submitted evidence that the Disputed Domain Name is used in a possible mailing scam.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the Disputed Domain Name contains the trademark RECIPHARM in its entirety with the additions of the letters “-se”, which are added to give the impression that it is a Swedish domain name.

Rights or legitimate interests

The Complainant states that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In addition, there is no bona fide offering of goods or services as the Disputed Domain Name does not resolve to any content.

The Complainant further contends that the Respondent has no other connection by way of commercial or any other business with the Complainant’s business.

Finally, the Complainant alleges that the Respondent is deliberately and illegitimately disrupting the Complainant’s business.

Registration and use in bad faith

The Complainant states that the Disputed Domain Name was registered to be actively used in an ongoing mailing scam. In addition, the use of the Complainant’s trademark evidences the Respondent bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Substantive Matters

Paragraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Name in this case:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Disputed Domain Name <reciphram-se.com> is confusingly similar to the Complainant’s trademark RECIPHARM, since it incorporates the Complainant’s trademark in its entirety. The addition of the hyphen and the letters “se” does not negate the confusing similarity.

Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent 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, even if the Respondent has acquired no 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 at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. Furthermore, the Respondent is not known by the Disputed Domain Name.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name.

In addition, according to the Complainant, the Respondent created a fake email account in order to send emails to the Officers of the Complainant Company.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The fact that the Disputed Domain Name reproduces the Complainant’s trademark, establishes that the Respondent was well aware of the Complainant’s trademark when he registered the Disputed Domain Name. The addition of the letters “se”, which stand for the abbreviation of Sweden, enhances the Respondent bad faith, since is the county where the Complainant is established.

Moreover, the Respondent used the Disputed Domain Name to send emails to the Complainant Officers stating that there is an urgent payment to be done. This fact alone shows that the Respondent was well aware of the Complainant and its business and trademark when it registered the Disputed Domain Name.

In addition, the Respondent did not submit any explanation or possible justification for its use of the Disputed Domain Name.

Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademarks and its websites for the purpose of disrupting the business of the Complainant, as described by paragraph 4(b)(iii) of the Policy.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.

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 <recipharm-se.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: January 30, 2020

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