WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orphalan S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Kevin Yao

Case No. D2021-1720

1. The Parties

Complainant is Orphalan S.A., France, represented by TAoMA Partners, France.

Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Kevin Yao, China.

2. The Domain Name and Registrar

The disputed domain name <orphalan.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2021. On June 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 8, 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 Respondent of the Complaint, and the proceedings commenced on June 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2021. The Response was filed with the Center on June 29, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on July 7, 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

Complainant is a French holding company, formed in 2011, whose subsidiaries are located in various countries and whose primary aim is “the identification, development and proportion of treatments related to rare diseases”.

On March 31, 2020, Complainant applied for a trademark with the European Union (“EU”) for ORPHALAN INNOVATION FOR ORPHAN DISEASES. This application was granted, and the EU trademark was registered (Registration No. 018218699) on July 16, 2020 (effective as of March 31, 2020), for various goods and services including: “diagnostic agents for pharmaceutical use”, “medical apparatus and instruments”, “pharmaceutical products development”, and “medication counseling”.

The Domain Name was registered on March 31, 2020 (though Complainant asserts that it was actually April 1, 2020). It appears in any event that the Domain Name was registered a few hours after Complainant’s EU trademark application was filed. There is no evidence in the record that the Domain Name has ever resolved to an active website.

On October 20, 2020, a domain name brokerage service conveyed to Complainant, evidently in response to a query from the latter about the Domain Name, an offer whereby Respondent would sell the Domain Name to Complainant for USD 12,000.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent states that he registered the Domain Name “for our own project”. He also states that, at the time the Domain Name was registered, Complainant held no registered trademark, but merely a trademark application. Respondent also states that the Domain Name was chosen because it “is just a combination of two letters Orpha and Lan”. According to Respondent, Orpha “is widely used in corporate logos in China”, and Lan “is the common Chinese pinyin for surnames”.

6. Discussion and Findings

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

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

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

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

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the trademark ORPHALAN INNOVATION FOR ORPHAN DISEASES through registration demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to Complainant’s mark. The dominant portion of the trademark is the fanciful word “orphalan”, which is the entirety of the Second-Level Domain in the Domain Name.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks any rights or legitimate interests in respect of the Domain Name. Respondent asserts that he registered the Domain Name “for our own project”, but he provides no evidence of what this alleged project is, why the Domain name was well-suited for the project, and what preparations, if any, have been made to advance the project. Given Respondent’s more general credibility problem (discussed below in the “bad faith” section), the Panel finds Respondent’s alleged project to be unsupported and probably nonexistent.

The only thing the Panel knows from the case file that Respondent has done with the Domain Name was, in response to a query from Complainant through a brokerage service, to offer to sell it to Complainant for USD 12,000. On this record, the Panel cannot conclude that Respondent’s conduct vis-à-vis the Domain Name is legitimate or vests Respondent with rights in the Domain Name.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Respondent asserts that he registered the Domain Name “for our own project”, but there is no evidence that such a project exists. Respondent also states that the Domain Name was chosen because it “is just a combination of two letters Orpha and Lan”. According to Respondent, Orpha “is widely used in corporate logos in China”, and Lan “is the common Chinese pinyin for surnames”. In this regard, Respondent has provided search results over the Internet which shows Orpha seems to be an American brand for binoculars and Lan refers to “local area network” or a Chinese surname. This purported explanation does not advance Respondent’s position, though, as there is no reason why the combination Orpha and Lan supports Respondent’s alleged “project”. In short, on this record, Respondent’s professed motives appear to be pretextual, not genuine.

In addition, the Panel finds that Respondent labors under a very serious credibility problem. This Respondent was held to be in bad faith in prior UDRP cases, with fact patterns similar to the one here. For instance, in the recent UDRP case Lazard Freres & Co. LLC and Lazard Frères S.A.S. v. Super Privacy Service LTD c/o Dynadot / Domain Admin, Kevin Yao, WIPO Case No. D2021-1028 (“Lazard”), this same Respondent had registered the domain name <lazardnext.com> within a day of the complainant registering a trademark application for LAZARDNEXT. The panel in Lazard found this Respondent to have registered the Domain Name in bad faith. The Lazard panel wrote:

“As at the date of registration of the disputed domain name, the Complainant’s distinctive LAZARD trade mark was both long-established and well-known in the field of financial services. The Panel accepts the Complainant’s assertion that the Respondent was aware of the Complainant’s mark, as at the date of its registration of the disputed domain name, and registered it because the filing by the Complainant’s affiliate, Lazard Strategic Coordination Company, of trade mark applications for LAZARDNEXT in Benelux and Switzerland suggested that this was to be an additional trading name to be adopted within the Complainant’s group of companies. The appropriate inference to draw is that the Respondent hoped that the Complainant would wish to acquire the disputed domain name so that it could properly reflect its new trading style online. The fact that the disputed domain name was registered the day after the Complainant’s applications were filed excludes any other plausible explanation. Such registration falls within the circumstance of bad faith described at paragraph 4(b)(i) of the Policy.

Whilst UDRP panels would not normally find bad faith on the part of a respondent where the domain name in issue has been registered before a complainant’s trade mark rights have been registered, panels have found bad faith where a respondent’s intent in registering the domain name in issue has been to unfairly capitalize on a complainant’s nascent trademark rights. Among the circumstances where such a finding would be appropriate is if a respondent has registered the domain name in issue as a result of having established that the complainant has applied for a trade mark; see section 3.8.2 of the WIPO Overview 3.0 and, by way of example, General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845. Having regard to the sequence of events outlined above, that has plainly been the motivation for the Respondent’s registration of the disputed domain name.

In all the circumstances, the Panel finds that the registration of the disputed domain name by the Respondent, with evident knowledge of the Complainant and its LAZARD mark as well as its pending trade mark applications for LAZARDNEXT, was in bad faith.”

The fact pattern in the Lazard case, which featured the same Respondent as in the present case, is too similar to ignore. In both cases, Respondent appears to have registered a “.com” domain name resembling a prospective trademark reflected in a trademark application just hours after the application was filed.

With respect to bad faith use, the Panel finds that Respondent’s offer to sell the Domain Name for USD 12,000 constitutes bad faith use within the meaning of the above-quoted Policy paragraph 4(b)(i).

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <orphalan.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: July 16, 2021