The Complainant is Laboratoires Thea, France, represented by AARPI Scan Avocats, France.
The Respondent is Peiyi Zi, China.
The disputed domain name <theatrophy.com> is registered with DOMAINNAME FWY, INC. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2021. On April 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2021, 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.
On April 28, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 30, 2021, the Complainant submitted an amended Complaint in English and a 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 in English and Chinese of the Complaint, and the proceedings commenced on May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on June 23, 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.
The Complainant is headquartered in France and is a company active in the pharmaceutical industry. The Complainant offers a portfolio of ophthalmology products, both preventive and curative, in the areas of diagnosis, surgery and therapeutics and is active in more than 70 countries worldwide, through its network of subsidiaries, licensees and distributors. The Complainant also promotes an international contest for ophthalmologic practitioners, called the “Théa inteRnational cOntest of clinical cases in PatHologies of the eYe”, abbreviated as the “THEA TROPHY”, and has registered the domain name <thea-trophy.com> on May 14, 2012, directing to a website promoting this contest.
The Complainant owns a portfolio of trademarks (figurative and word marks) protecting its trademarks for THEA in a number of jurisdictions throughout the world. The registrations for such trademark, of which evidence was provided by the Complainant, include, amongst others, the following trademark registrations: French trademark registration 94502704 for THEA, registered on January 21, 1994 and European Union Trade Mark registration number 018102779 for THÉA, registered on December 21, 2019.
The disputed domain name was registered on March 25, 2021, and the Complainant provides evidence that it is linked to an active webpage containing gambling and pornographic material.
The Complainant essentially contends that the disputed domain name consists of a combination of its trademarks for THEA and the merely descriptive element “trophy” and is therefore confusingly similar to such trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks for THEA are well-known trademarks and provides evidence that its THEA trademarks were held to be particularly distinctive by the panel in a previous UDRP procedure, namely in Laboratoires Thea SAS v Yohan Henrino, WIPO Case No. D2015-0266. The Complainant also provides evidence that the disputed domain name is linked to an active webpage containing gambling and pornographic content. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes use in bad faith of its trademarks for THEA.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant stated in its Complaint that the language of the Registration Agreement is Chinese as the Registrar appear to be located in China, but requested that the language of the proceeding be English. On April 28, 2021, the Center notified the Complainant that the language of the Registration Agreement is Chinese. The Complainant confirmed in its amended Complaint its request that English be the language of the proceeding, while the Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s requests that the language of proceedings be English; the fact that the Respondent did not comment on the language of the procedure and did not submit arguments on the merits (the Panel notes that the Respondent had the opportunity to respond in either English or Chinese); the fact that the disputed domain name itself is in English, and that the website hosted at the disputed domain name contains a disclaimer in English as well a statement that the operator of the website is located in the United States of America, from which the Panel deducts that the Respondent understands, and is able to communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted costs and delays for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
The Panel finds that the Complainant has shown that it has valid rights in the mark THEA, based on its intensive use and registration of the same as trademarks in a number of jurisdictions.
Moreover, as to confusing similarity, in the Panel’s view, the disputed domain name consists of the combination of the Complainant’s registered trademarks for THEA followed by the merely descriptive word “trophy”, combined with the Top-Level Domain (“gTLD”) “.com”. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, which states: “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, which remains easily recognizable. Moreover, the addition of the merely descriptive element “trophy” does not distinguish the disputed domain name from the Complainant’s trademarks (see WIPO Overview 3.0, section 1.8) and the addition of the applicable gTLD (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel (see WIPO Overview 3.0, section 1.11.1).
Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy.
On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.
Moreover, upon review of the facts, the Panel notes that the disputed domain name directs to an active webpage containing gambling and pornographic content. In the Panel’s view, no rights or legitimate interests derive from using another’s trademark to divert Internet users to a pornographic website, see in this regard also several prior UDRP decisions such as Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov, WIPO Case No. D2017-0381; L’Oréal v. Robert Caceres, Dollarviews, WIPO Case No. D2015-1200; Neste Oil Oyj v. Nesin Dmitry / Privacy Protection Service INC, WIPO Case No. D2014-0883 and Averitt Express, Inc. v. Protection of Private Person / Roman Emec, WIPO Case No. D2018-0249.
Furthermore, the nature of the disputed domain name, incorporating the Complainant’s trademarks for THEA and a term related to a contest hosted by the Complainant, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
The registration of the disputed domain name, which incorporates the Complainant’s trademarks for THEA in their entirety, is clearly intended to mislead and divert consumers away from the Complainant’s official websites (including the Complainant’s website hosted at the very similar prior domain name <thea‑trophy.com>) to the website linked to the disputed domain name. The Panel considers that the Respondent has clearly intentionally targeted the Complainant’s well-known trademarks for THEA, as well as its pre-existing domain name <thea-trophy.com>, which the Respondent seemed to have tried to typosquat (i.e. registering a domain name to create consumer confusion and commercial gain based on mistakes such as typos made by Internet users when inputting a domain name into a web browser). In the Panel’s view, the preceding elements clearly indicate the bad faith of Respondent in registering the disputed domain name, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the website linked to the disputed domain name currently displays gambling and pornographic content, which shows that the Respondent is abusing the Complainant’s trademarks to mislead and divert consumers for commercial gain to its website containing pornographic content and thereby also tarnishes its marks, see in this regard also previous UDRP decisions such as Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi, WIPO Case No. D2017-1639; Bank of Jerusalem Ltd. v. Shek Cheung Chung, WIPO Case No. D2017-1153 and Averitt Express, Inc. v. Protection of Private Person / Roman Emec, WIPO Case No. D2018-0249. The Panel considers the foregoing direct evidence of use of the disputed domain name in bad faith by the Respondent.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <theatrophy.com> be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: July 7, 2021