Westmore · UDRP DecisionCoversyl.xyz
The Panel ordered transfer of <coversyl.xyz> to BIOFARMA. It found the domain confusingly similar to the dominant word element of the Complainant’s COVERSYL device marks, found no evidence of Respondent rights or legitimate interests, and concluded that registration with knowledge of the distinctive COVERSYL mark, combined with passive holding, nonresponse, and the absence of an apparent legitimate explanation, established bad-faith registration and use.
The timeline behind coversyl.xyz
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The decision illustrates how passive holding can satisfy bad-faith use when a domain exactly adopts a distinctive pharmaceutical product name, the trademark rights substantially predate registration, no plausible legitimate reason for the selection appears, and the respondent remains silent both before and during the proceeding. It also confirms that the dominant textual element of a device mark can support confusing similarity even though the design features are absent from the domain.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BIOFARMA v. Domain Admin, Whois Privacy Corp. Case No. D2016-2024 1. The Parties The Complainant is BIOFARMA of Suresnes, France, represented by IP Twins S.A.S., France. The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar The disputed domain name <coversyl.xyz> (the “Domain Name”) is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2016. On October 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 6, 2016, 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. The Center verified that 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 October 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2016. The Center appointed Nicholas Smith as the sole panelist in this matter on November 21, 2016. 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 a pharmaceutical company that, along with its affiliate company Servier, sells a variety of pharmaceuticals, including its Coversyl product, which is taken for the treatment of high blood pressure. Coversyl has been available and marketed since at least 2004. The Complainant is the owner of various device marks, the dominant element being the word “coversyl” (the “COVERSYL Mark”) since 2009, when the Complainant filed for the registration of the COVERSYL Mark in France. These marks include International Trademark Registration No. 1033468 for the COVERSYL Mark, registered on February 8, 2010 for goods in Class 5, namely pharmaceutical preparations and dietetic products for medical use. The Complainant is also the owner of a number of domain names that feature the word “coversyl”, including <coversyl.com> and <coversyl.fr>. The Domain Name was registered on June 2, 2016. The Domain Name does not re-direct to an active site. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: (i) that the Domain Name is confusingly similar to the Complainant’s COVERSYL Mark; (ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The Complainant is the owner of the COVERSYL Mark, being the owner of trade marks registered both in France and various international jurisdictions for the COVERSYL Mark. The Complainant has also registered domain names that incorporate the COVERSYL Mark, including <coversyl.com> and <coversyl.fr>. The Domain Name contains the COVERSYL Mark in its entirety and hence is identical or confusingly similar to the COVERSYL Mark. The Respondent is not commonly known by the Domain Name nor does it have any trade marks that correspond to the Domain Name. The Complainant has not authorized or licensed the Respondent to use the COVERSYL Mark or any confusingly similar variations thereof. Upon information and belief, the Respondent has not made demonstrable preparations to use the Domain Name for a bona fide offering of goods and services or made a legitimate noncommercial or fair use of the Domain Name. The Respondent has registered and proposes to use the Domain Name in bad faith. “Coversyl” is an invented/fanciful name which suggests that the Respondent must have known of the Complainant at the time of registration and proposes to use the Domain Name by reference to the Complainant. The inherent nature of the Domain Name shows that the Respondent plans to make unauthorized commercial use of the Domain Name. There is no plausible circumstance under which the Respondent could legitimately use the Domain Name other than in bad faith. The Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the COVERSYL Mark, having registrations for the COVERSYL Mark as a trade mark throughout the world. The Domain Name consists of the dominant word element of the COVERSYL Mark, omitting only the device elements that are not able to be reproduced as part of a domain name. The absence of the device elements does not operate to distinguish the Domain Name from the COVERSYL Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s COVERSYL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you 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 (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 are making 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the COVERSYL Mark or a mark similar to the COVERSYL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Name at all. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations 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 its documented out-of-pocket costs directly related to the Domain Name; or (ii) the 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 the Respondent has engaged in a pattern of such conduct; or (iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Panel finds that the Respondent must have been aware of the Complainant and its reputation in the COVERSYL Mark at the time the Respondent registered the Domain Name. “Coversyl” is not an ordinary English word. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the COVERSYL Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the COVERSYL Mark. The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Name, the failure to reply to the Complainant’s cease-and-desist letter, the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that is identical to the name of the Complainant’s Coversyl product and the lack of any apparent legitimate reason for the registration and use of the Domain Name, that the Domain Name is most likely being held pending use as website that, without the license of the Complainant, will offer or make reference to the Complainant’s Coversyl drug product, or products that purport to compete with the Complainant’s Coversyl drug product, under the COVERSYL Mark. As such Panel finds that the passive holding of Domain Name amounts to use in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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 <coversyl.xyz> be transferred to the Complainant. Nicholas Smith Sole Panelist Date: November 23, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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