The Complainant is NAOS, France, represented by Nameshield, France.
The Respondent is 吴二侬 (Er Nong Wu), China.
The disputed domain name <biodermasolutions.com> is registered with West263 International Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2020, 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 October 21, 2020 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 October 21, 2020.
On October 21, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 21, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 November 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2020.
The Center appointed Sok Ling MOI as the sole panelist in this matter on December 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.
The Complainant, a company incorporated in France 40 years ago, is a manufacturer and seller of skincare products. The Complainant’s skincare products under the brand name and trade mark BIODERMA are sold in over 90 jurisdictions. The Complainant has more than 3,000 employees located around the world.
The Complainant owns numerous trade mark registrations for BIODERMA in various jurisdictions worldwide, including the following:
|
Jurisdiction |
Mark |
Registration No. |
Registration Date |
|
International |
BIODERMA |
267207 |
March 19, 1963 |
|
International |
BIODERMA |
510524 |
March 9, 1987 |
|
International |
BIODERMA |
678846 |
August 13, 1997 |
|
European Union |
BIODERMA |
003136892 |
June 5, 2007 |
The Complainant has owned and used the domain name <bioderma.com> since September 25, 1997.
The disputed domain name <biodermasolutions.com> was registered on October 6, 2020 and resolves to a news website with Chinese contents.
The Complainant claims that the disputed domain name is confusingly similar to its trade mark.
The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name is used to attract Internet users by creating a likelihood of confusion with the Complainant’s trade mark, and the Respondent is obtaining commercial gain from its use of the disputed domain name and the resolving website. The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and
(b) the disputed domain name is comprised of the English words “bio”, “derma”, and “solutions”.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in BIODERMA by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant’s BIODERMA trade mark in its entirety. The addition of the descriptive English word “solutions” is not sufficient to dispel the confusing similarity between the disputed domain name and the Complainant’s trade mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not in this case impact on the confusing similarity analysis.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BIODERMA trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the BIODERMA trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “bioderma”.
According to the evidence submitted by the Complainant, the Respondent is using the disputed domain name to publish a news website with Chinese contents. The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant has used BIODERMA as a trade mark for over 40 years, and enjoys an international reputation for its skincare products. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the BIODERMA trade mark and its extensive use by the Complainant. A presumption arises that the Respondent was aware of the Complainant and its trade mark when he registered the disputed domain name. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
According to the evidence submitted by the Complainant, the Respondent is using the disputed domain name to publish a news website with Chinese contents. A presumption arises that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to its own website for financial gain. The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Furthermore, efforts to send the Written Notice to the Respondent at the physical address and fax number provided by the Respondent to the Registrar (and in turn to the Center) failed, which suggests that the Respondent had provided false contact details at the time of registering the disputed domain name. This further suggests a lack of bona fide.
The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the 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 <biodermasolutions.com> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: January 20, 2021