The Complainant is Alfasigna S.p.A., Italy, represented by Bugnion S.p.A., Italy.
The Respondent is Dobrea Bogdan, Romania.
The disputed domain name <proxeed.ro> (“Disputed Domain Name”) is registered with RoTLD (the “Registry”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2020. On November 16, 2020, the Center transmitted by email to the Registry a request for Registry verification in connection with the Disputed Domain Name. On November 17, 2020, the Registry 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 November 26, 2020, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 15, 2021.
The Center sent an email communication in English and Romanian to the parties on November 26, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Romanian. The Complainant submitted a request for English to be the language of the proceeding on November 26, 2020. The Respondent did not comment on the language of the proceeding.
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 January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2021.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 25, 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 a leading pharmaceutical company in Italy. The Complainant employs over 3,000 people worldwide and serves customers in more than 70 countries through a network of distributors. The Complainant had a turnover of more than EUR 1 billion in 2019.
The Complainant is the owner of numerous trade mark registrations for the PROXEED mark in various jurisdictions, including, inter alia, the PROXEED trade mark (Reg. No. 000938878) registered on January 28, 2005 in the European Union.
The Complainant also owns and operates the domain name <proxeed.eu>.
The Respondent registered the Disputed Domain Name on January 29, 2019.
The Complainant’s primary contentions can be summarised as follows:
(a) The Disputed Domain Name incorporates the Complainant’s PROXEED trade mark in its entirety and is therefore identical to the Complainant’s PROXEED trade mark.
(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its PROXEED trade mark. Although the website to which the Disputed Domain Name resolves purports to offer the Complainant’s PROXEED products for sale at a discounted price, this does not make the use and registration of the Disputed Domain Name legitimate or lawful.
(c) The Respondent registered and has been using the Disputed Domain Name in bad faith. The website to which the Disputed Domain Name resolves is an ecommerce platform through which the Complainant’s products (or counterfeits thereof) are promoted and offered for sale at a discounted price. Some of the photos from the Complainant’s official website are used by the Respondent without authorisation from the Complainant. The Respondent is using the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Paragraph 11(a) of the Rules provides that “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”.
In the present case, the registration agreement is in Romanian, and the Respondent appears to be based in Romania.
The Complainant has requested that English be the language of the proceedings for the following reasons:
(a) the Complainant does not understand Romanian and it would be disproportionate to require the Complainant to submit the Complaint in Romanian as this would result in additional expense and unnecessary delay; and
(b) English is a common spoken language in the world and the fact that the Respondent is involved in commercial activities suggests that the Respondent would be familiar with the English language to a certain extent.
The Respondent did not comment on or oppose the Complainant’s request.
Panels have to take into account all relevant circumstances of the case and exercise its discretion to use a language other than that of the registration agreement in a fair and just manner. In the present case, the Panel accepts that the Complainant is unable to communicate in Romanian. Additional expenses will be incurred if the Complainant is required to submit documents in Romanian and the proceeding may otherwise proceed expeditiously in English. Furthermore, the Respondent did not object to the Complainant’s request to use English as the language of the proceedings.
Having considered the circumstances above, the Panel finds that both Parties have been given a fair opportunity to present their case and that the Respondent would not be prejudiced should the language of the proceeding be English. The Panel therefore determines that this administrative proceeding shall be conducted in English.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the PROXEED trade mark, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.ro” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name incorporates the Complainant’s PROXEED trade mark in its entirety without any prefixes or suffixes.
As such, the Panel finds that the Disputed Domain Name is identical to the Complainant’s PROXEED trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of production of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the PROXEED trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the PROXEED trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to him 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 was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he 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.
There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use as the Disputed Domain Name resolves to a website that offers the Complainant’s PROXEED products (or counterfeits thereof) at a discounted price without the Complainant’s consent. Such use of the Disputed Domain Name would likely give a false impression that the website to which the Disputed Domain Name resolves is the Complainant’s official Romanian website, and is thus capable of misleading and diverting visitors and tarnishing the Complainant’s PROXEED trade mark.
The Panel notes that the disputed domain name is identical to the Complainant’s trademark, which carries a high risk of implied affiliation.
In addition, there is no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become known by the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
UDRP panels have consistently found that the mere registration of a domain name that is identical to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0.
The Complainant’s PROXEED trade mark appears to be fairly well-known in Europe. A quick Internet search shows that the top search results returned for “Proxeed” are the Complainant’s official website and several third party websites making references to or selling the Complainant’s products and services. As the Respondent’s website is an online shopping site on which products bearing the Complainant’s PROXEED mark are being sold, the Respondent must have been aware of the Complainant and their rights in the PROXEED trade mark when registering the Disputed Domain Name. The fact that the Disputed Domain Name incorporates the Complainant’s PROXEED trade mark in its entirety also creates a presumption of bad faith.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:
(i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; and
(ii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is identical to the Complainant’s PROXEED mark and similar to the official domain name <proxeed.eu>, and resolves to an online shopping site offering products bearing the Complainant’s mark for sale at a discounted price. Any use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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, <proxeed.ro>, be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: March 11, 2021