WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Norgine Limited v. Danesco Trading Ltd / Norgia Dorrisson

Case No. D2021-0459

1. The Parties

The Complainant is Norgine Limited, United Kingdom, represented by Deloitte LLP, United Kingdom.

The Respondent is Danesco Trading Ltd, Cyprus / Norgia Dorrisson, Singapore.

2. The Domain Name and Registrar

The disputed domain name <norginemanufacturing.com> (the “Disputed Domain Name”) is registered with Danesco Trading Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 17, 2021, 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 February 17, 2021 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 February 17, 2021.

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 February 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2021.

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 a group of pharmaceutical companies with offices and factories in numerous European countries and Australia. Currently employing approximately 1,500 individuals, the Complainant is one of the leading pharmaceutical businesses in Europe, and has been actively trading, and researching and developing pharmaceutical products for more than a century. Some of the Complainant’s products bear their own brand names, and the Complainant’s NORGINE trademark is also placed on those products.

The Complainant is the owner of numerous NORGINE trademark registrations worldwide, including, but not limited to: NORGINE, European Union Trade Mark No. 8148306, registered on October 10, 2009 in International class 5; and NORGINE, United Kingdom Trade Mark No. UK609225, registered on September 26, 1939 in International class 5 (hereinafter collectively referred to as the “NORGINE Mark”).

The Complainant owns and operates a large portfolio of domain names which incorporate the NORGINE Mark, consisting of the NORGINE Mark alone or accompanied by a term. The Complainant’s principal domain name, <norgine.com>, resolves to the Complainant’s official website at “www.norgine.com”.

The Disputed Domain Name was registered on May 8, 2020. The Disputed Domain Name initially resolved to a website impersonating the Complainant’s website in an attempt to mislead customers and disrupt the Complainant’s business. In addition, the Disputed Domain Name was being used in connection with a phishing scheme in which the Respondent configured the Disputed Domain Name for email functions so that the Respondent could contact the Complainant’s customers. As of the writing of this Decision, the Disputed Domain Name no longer resolves to the Respondent’s resolving website, or any other website. Instead, the Disputed Domain Name currently resolves to an error landing page with no content.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(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

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the NORGINE Mark based on its many years of use as well as its registered trademarks for the NORGINE Mark in multiple jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the NORGINE Mark.

The Disputed Domain Name <norginemanufacturing.com> consists of the NORGINE Mark in its entirety followed by the dictionary term “manufacturing”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001‑0903. Here, the Disputed Domain Name contains the Complainant’s NORGINE Mark in its entirety and thus, the Disputed Domain Name is confusingly similar to the NORGINE Mark.

Moreover, as stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a descriptive or dictionary word to a trademark is insufficient to prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012‑0182 and WIPO Overview 3.0, section 1.11.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its NORGINE Mark. Nor does the Complainant have any type of business relationship with the Respondent and there is no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name corresponding to it. The Panel finds that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.

Based on the use made of the Disputed Domain Name to resolve to a website that impersonates the Complainant’s website in an attempt to deceive consumers into believing that they have reached a website that is operated or endorsed by or otherwise affiliated with the Complainant, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. See MasterCard International Incorporated v. Dhe Jonathan Firm, WIPOCase No. D2007-0831 (finding that the act of linking the respondent’s impersonating website to the complainant’s official website was not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name).

Finally, the composition of the Disputed Domain Name, comprising the entirety of the NORGINE Mark followed by the dictionary term “manufacturing”, carries a high risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the circumstances of this case including claims that the Disputed Domain Name has been used to impersonate the Complainant and perpetrate a fraudulent email phishing scheme, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Disputed Domain Name may be put, support an inference of bad faith.

Second, the Disputed Domain Name was registered long after the Complainant first began using its NORGINE Mark. The Panel finds it likely that the Respondent had the Complainant’s NORGINE Mark in mind when registering the Disputed Domain Name, demonstrating bad faith.

In this case, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Name. By sending fraudulent emails and impersonating the Complainant, it is evident that the Respondent had knowledge of the Complainant, its business, and its NORGINE Mark when registering the Disputed Domain Name. In light of the circumstances in this case, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s NORGINE Mark at the time the Disputed Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Third, by registering and using the Disputed Domain Name for commercial gain, the Respondent has exhibited bad faith. Specifically, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s fraudulent emails by creating a likelihood of confusion with the Complainant’s name and NORGINE Mark as to the source, sponsorship, affiliation, or endorsement of those emails. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367 (finding paragraph 4(b)(iv) of the Policy applicable where the disputed domain name was not used in a typical website, but rather used in an email address to send scam emails). Moreover, the Respondent was using the Disputed Domain Name in a phishing scheme aimed at defrauding the Complainant and its customers. “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” See WIPO Overview 3.0, section 3.4.

Finally, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be sufficient in certain circumstances to infer opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s NORGINE Mark for commercial gain.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <norginemanufacturing.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: April 2, 2021