Westmore · UDRP DecisionViacoralix.com
The Panel ordered transfer of <viacoralix.com>. Although the Complainant's VIACORALIX registrations postdated the domain registration, the Panel found the domain identical to the registered mark. It also found no rights or legitimate interests and concluded that the timing of the registration—five days after the French trademark filing and on the same day as the European Union filing—together with the Complainant's worldwide repute, the domain's identity to the mark, and passive holding demonstrated opportunistic bad-faith registration and use.
The timeline behind viacoralix.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
This decision illustrates the distinction between the timing inquiry under the first UDRP element and the timing-sensitive analysis of bad-faith registration. Later-acquired registered rights were sufficient for standing and identity under the first element, while the Panel relied on the domain's close temporal overlap with the trademark applications and other circumstances to find knowledge of pending or imminent rights and opportunistic bad faith. It also demonstrates that passive holding may constitute bad-faith use when supported by the surrounding facts.
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, SAS v. DomainAdmin / UC-SELECT Case No. D2016-2056 1. The Parties The Complainant is Biofarma, SAS of Suresnes, France, represented by IP Twins S.A.S., France. The Respondent is DomainAdmin / UC-SELECT of Beijing, China. 2. The Domain Name and Registrar The disputed domain name <viacoralix.com> is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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. In response to a notification regarding the mutual jurisdiction, the Complainant filed an amended Complaint on October 13, 2016. On October 13, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On October 17, 2016, the Respondent submitted a request that Chinese be 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 both Chinese and English of the Complaint, and the proceeding commenced on October 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2016. No further communication was received from the Respondent after notification of the Complaint. On November 10, 2016, the Center informed the Parties that it would proceed with panel appointment. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 15, 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 A. Complainant The Complainant is a company incorporated in France, and is the largest independent pharmaceutical company in France. The Complainant’s group of companies are active in 140 countries and has more than 21,000 employees worldwide. The Complainant is the owner of two registrations for the trade mark VIACORALIX (the “Trade Mark”) - French registration No. 4266596, with a filing date of April 20, 2016 and a registration date of August 12, 2016; and European Union registration No. 015373285, with a filing date of April 25, 2016 and a registration date of August 17, 2016. B. Respondent The Respondent is apparently an individual resident in China. C. Disputed Domain Name The disputed domain name was registered on April 25, 2016. D. Website at the Disputed Domain Name The disputed domain name has not been used by the Respondent. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, 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. B. Respondent Except for the Respondent’s email of October 17, 2016 regarding the language of the proceeding, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Complainant has requested that English be the language of the proceeding, for the following reasons: (1) The Complainant has conducted a reverse WhoIs search, the results of which suggest the Respondent has registered several domain names comprising English language words, which is a strong indication that the Respondent is likely to understand English and able to undergo the proceeding in English; (2) The Respondent’s email address is composed of generic English terms which is another indication of the capacity of the Respondent to understand English; (3) The Complainant sent a cease and desist letter in English to the Respondent on August 25, 2016, along with an automated translation in Chinese. The Complainant has received no response whatsoever to that letter, despite several reminders. From this fact, it may clearly be inferred that the Respondent has no particular interest in the disputed domain name and, therefore, if the proceeding is conducted in English it can’t be seen as detrimental to the Respondent; (4) The Complainant is not able to communicate in Chinese. Being a French entity, the Complainant is not in a position to conduct the proceeding in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint. English language is not the native language of the Complainant or its representative, therefore it would not give it unfair advantage over the Respondent. The Respondent has requested that Chinese be the language of the proceeding, for the following reasons: (1) In accordance with the UDRP, the language of the proceeding should be Chinese; (2) After receipt of the Complaint, the Respondent ascertained that the Complainant has a subsidiary company in China, and the Complainant should therefore be able to provide a Chinese language translation of the Complaint. Having received notice of the proceeding in both Chinese and English, and having made its language request, the Respondent chose not to file a response. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel considers that, although there is no compelling evidence to suggest that the Respondent is conversant in English, in all the circumstances of this proceeding, and, further, in light of the Respondent’s decision to take no part in this proceeding (other than submitting its language request), it would be inappropriate to conduct the proceeding in Chinese, which would necessarily involve extra costs on the part of the Complainant in translating the Complaint into Chinese, and would delay the resolution of this proceeding. Whilst the Panel does not find the Complainant’s submissions on the language of the proceeding compelling, the Panel notes the Respondent in the Respondent’s language request did not submit that the Respondent is not conversant in English. In all the circumstances and for the above reasons, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Substantive Elements of the Policy The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through registration. The disputed domain name comprises the Trade Mark in its entirety. The disputed domain name was registered five days after the date of filing of the Complainant’s application for registration of the Trade Mark in France, and on the same day the Complainant’s application for registration of the Trade Mark in Europe was filed. The Complainant has not included in the Complaint submissions or evidence to demonstrate the possession of relevant common law or unregistered trade mark rights in respect of the Trade Mark which pre-date the dates of registration of the Trade Mark in France and in Europe (or at all). Although it would therefore appear the Complainant may not have possessed trade mark rights in respect of the Trade Mark at the time of the registration of the disputed domain name, the date upon which the Complainant first acquired relevant trade mark rights is irrelevant for the purposes of the first limb under paragraph 4(a) of the Policy (see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). The Panel therefore finds that the disputed domain name is identical to the Trade Mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to the respondent 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 in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent 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. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that he or she has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has made no use of the disputed domain name. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel therefore finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Although it appears, from the evidence before the Panel, that the Complainant may not have been in possession of relevant rights in the Trade Mark at the time of registration of the disputed domain name, the timing of the registration of the disputed domain name, and the overlap with the filing dates of the Complainant’s applications for registration of the Trade Mark, coupled with the repute of the Complainant worldwide (including in China), suggest opportunistic registration in bad faith on the part of the Respondent (see WIPO Overview 2.0 , paragraph 3.1 ). The Panel is fortified in making this conclusion by the fact the disputed domain name is identical to the Trade Mark. Although the Respondent has not made any use of the disputed domain name, the circumstances of this proceeding demonstrate that the Respondent must have known of the Complainant and of its pending or imminent rights in the Trade Mark at the time of the Respondent’s registration of the disputed domain name. Furthermore, the Panel considers that, under the circumstances, the Respondent’s passive holding of the disputed domain name constitutes bad faith use for purposes of the Policy (see WIPO Overview 2.0 , paragraph 3.2 ). For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and used in bad faith. 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 <viacoralix.com> be transferred to the Complainant. Sebastian M.W. Hughes Sole Panelist Dated: November 29, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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