Ferring B.V. v. DANIEL DOMINGO / FERRING INC
Claim Number: FA1502001604942
Complainant is Ferring B.V. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is DANIEL DOMINGO / FERRING INC (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ferring-uk.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 13, 2015; the Forum received payment on February 16, 2015.
On February 17, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <ferring-uk.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ferring-uk.com. Also on February 19, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since 1980 Complainant has used the FERRING mark to promote the sale of its products and services in the pharmaceutical and health care industries.
Complainant holds a registration, which is on file with the United States Patent and Trademark Office (“USPTO”), for the trademark FERRING, Registry No. 2,731,962, registered July 22, 2003.
Respondent registered the <ferring-uk.com> domain name on or about January 6, 2015.
The domain name is confusingly similar to Complainant’s FERRING mark.
Complainant has never contracted, licensed or otherwise permitted Respondent to use its FERRING mark.
Respondent uses the domain name to perpetrate a fraud by impersonating personnel of Complainant in order to dupe Internet users into applying for employment with Complainant or one of its affiliate companies.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts complainant’s business.
Respondent employs both a fictitious persona mimicking an actual official of Complainant and an e-mail address modeled on those actually used by Complainant in order to facilitate its fraud.
Respondent knew of complainant and its rights in the FERRING trademark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the FERRING trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that because a trademark holder had registered its mark with one or more national trademark authorities, “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Philippines). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction). See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under Policy ¶ 4(a)(i) whether a complainant has registered its trademark in the country of a respondent’s residence).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review
of the record that the <ferring-uk.com> domain name is confusingly similar to Complainant’s FERRING trademark. The domain name contains the mark in its entirety, with only the addition of the country code “uk” (for United Kingdom) and the generic Top Level Domain (“gTLD”) “com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Ferring B.V. v. Dominique Ferland, FA 1139912 (Nat. Arb. Forum Mar. 18, 2008) (finding the <euflexxa-canada.com> and <euflexxacanada.com> domain names confusingly similar to a complainant's EUFLEXXA Trademark).
See also Exxon Mobil Corp. v. Domains By Proxy, FA 1247242 (Nat. Arb. Forum May 22, 2009) (finding, among other things, that the addition of a generic Top Level Domain to the mark of another in creating a domain name was insufficient to alleviate confusion between a UDRP complainant's EXXON mark and a respondent's <exonbillpay.com> domain name).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Complainant has never contracted, licensed or otherwise authorized Respondent to use the FERRING trademark. And while the pertinent WHOIS record reflects that the registrant of the domain name is identified as “DANIEL DOMINGO / FERRING INC,” there is nothing in the record before us to indicate that Respondent has been commonly known by the <ferring-uk.com> domain name. On this record we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Ferring B.V. v. IT Company, FA 1392935 (Nat. Arb. Forum July 26, 2011); Ferring B.V. and Bio-Technology General (Israel) Ltd. v. Johnny Carpela, FA 1080649 and FA 1080654 (Nat. Arb. Forum Nov. 5, 2007).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <ferring-uk.com> domain name to perpetrate a fraud by impersonating personnel of Complainant in order to dupe Internet users into applying for employment with Complainant or one of its affiliate companies.
This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alphapharm Pty Limited ACN 002 359 739 v. Alpharpharm Global, FA1303001489058 (Nat. Arb. Forum Apr. 25, 2013) (finding, under Policy ¶ 4(c)(i)-(iii), that a respondent had not established rights to or legitimate interests in a domain name where that respondent's only use of the domain name was to redirect Internet users attempting to access a UDRP complainant's legitimate website and who used an email address associated with the domain name to act as an employee of that complainant while purporting to provide job offers).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <ferring-uk.com> domain name as alleged in the complainant disrupts Complainant’s business. This stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Smiths Grp. plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that a respondent’s attempt to impersonate an employee of a UDRP complainant was evidence of bad faith registration and use of a contested domain name under Policy ¶ 4(a)(iii)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the FERRING trademark when it registered the <ferring-uk.com> domain name. This too is proof of Respondent’s bad faith in registering and using the domain name. See The PNC Financial Services Group, Inc. v. Daniel Lee, FA1312001533525 (Nat. Arb. Forum Jan. 20, 2014) (finding the conclusion that a UDRP respondent registered disputed domain names in bad faith inescapable because "[r]espondent used the same street address as [c]omplainant as well as the same website URL and e-mail contact information on its website).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <ferring-uk.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 24, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page