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Bioderma.ro #UDRP : Panelist claims #WHOIS privacy is an indication of bad faith

The UDRP for the domain Bioderma.ro involved a Romanian company as the Respondent that changed its name.

The Complainant, NAOS, France, claimed the date of first use of its BIODERMA mark to be in 1963, with a European Union trademark registered in 2007.

Meanwhile, the Respondent incorporated in Roman as Bioderma S.R.L. in 2005, but changed its name to BIODERM Medical Center in 2008.

The sole panelist at the WIPO gave 2 out of 3 points to the Complainant: there was a trademark violation and the domain was used in bad faith since the Respondent’s name change.

However, the panelist stated that the registration itself did not occur in bad faith, accepting the Respondent’s claims that the domain was registered before there was a EU trademark in effect by the Complainant.

In making that statement, the panelist also added the following:

In this case, the Respondent submitted a Response to the Complaint and did not use any privacy and proxy services to conceal its identity or use any false contact details in breach of its registration agreement.

In our opinion, it’s ridiculous to assert that the use of a WHOIS privacy or proxy services—a legitimate service provided by ICANN-accredited domain registrars—is somehow an indication of a bad faith registration.

The domain transfer was denied.

Full details on the decision for Bioderma.ro follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NAOS v. Bioderm Medical Center
Case No. DRO2020-0007

1. The Parties

The Complainant is NAOS, France, represented by Nameshield, France.

The Respondent is Bioderm Medical Center, Romania.

2. The Domain Name and Registrar

The disputed domain name <bioderma.ro> (“Disputed Domain Name”) is registered with ROTLD.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2020. On September 4, 2020, the Center transmitted by email to ROTLD a request for registrar verification in connection with the Disputed Domain Name. On September 7, 2020, ROTLD 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 sent an email communication to the parties in English and Romanian on September 20, 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 September 21, 2020. The Respondent did not submit any communication regarding the language of the proceeding.

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 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. After a request for extension submitted by the Respondent, the due date for Response was extended until October 26, 2020. The Response was filed with the Center on October 26, 2020.

On November 10, 2020, the Complainant submitted an unsolicited supplemental filing.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 10, 2020. 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 was established in France 40 years ago and has now become one of the leading independent beauty companies in the cosmetic industry. The Complainant’s products are sold in more than 90 countries through its subsidiaries and local distributors.

The Complainant is the owner of numerous trade mark registrations for the BIODERMA mark in various jurisdictions, including, inter alia, the international BIODERMA trade mark (Reg. No. 267207) registered on March 19, 1963, the international BIODERMA trade mark (Reg. No. 510524) registered on March 9, 1987, the international BIODERMA trade mark (Reg. No. 678846) registered on August 13, 1997, and the BIODERMA trade mark (Reg. No. 003136892) registered on June 5, 2007 in the European Union.

The Complainant also owns and operates the domain name <bioderma.com>, which was registered on September 25, 1997.

The Respondent registered the Disputed Domain Name on February 24, 2005. The Disputed Domain Name currently resolves to an inactive webpage.

5. Parties’ Contentions
A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name incorporates the Complainant’s BIODERMA trade mark in its entirety and is therefore identical to the Complainant’s BIODERMA trade mark.

(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Respondent is identified as BIODERM Medical Center in the WhoIs database and is not commonly known by the Disputed Domain Name. The Complainant has never authorized or given permission to the Respondent, who is not associated with the Complainant in any way, to use its BIODERMA trade mark. The Disputed Domain Name currently resolves to an inactive webpage, which suggests the Respondent have no legitimate interests in the Disputed Domain Name.

(c) The top Google search results returned for the key word “BIODERMA” are all related to the Complainant and its products. The Respondent must have been aware of the Complainant’s BIODERMA trade mark at the time of registration of the Disputed Domain Name. The incorporation of a well-known trade mark in a domain name, which resolves to an inactive website, may be evidence of bad faith registration and use.

The Complainant filed a Supplemental Filing clarifying that “the international trademark BIODERMA n°678846 covers Romania since its registration on August 13th, 1997 (please see the annex 5 and the attached copy of the trademark including all the renewals), and not since 2007, as it is stated by the Respondent.”

B. Respondent

The Respondent’s primary contentions can be summarised as follows:

(a) the registration and use of the Disputed Domain Name by the Respondent will not cause confusion on the part of the public as the Respondent and the Complainant operate in different industries. The word “BIODERMA” is common to Latin-speaking individuals and is not a coined term created by the Complainant. Although the Disputed Domain Name is identical to the Complainant’s BIODERMA trade mark, it did not result in any loss being suffered by the Complainant.

(b) At the time of registration of the Disputed Domain Name, the Respondent was known as “BIODERMA”. The Respondent is still being referred to as “BIODERMA” by its patients and collaborators.

(c) The Respondent was incorporated in 2003 with the name of BIODERMA S.R.L., operating in the healthcare industry. The Respondent’s name later changed to BIODERM Medical Center in 2008. The Respondent was not aware of the Complainant’s BIODERMA trade mark when it registered the Disputed Domain Name. The Complainant’s European BIODERMA trade mark was in fact registered on June 5, 2007 instead of April 15, 2003 as claimed by the Complainant. The Complainant’s registration and use of the domain name <bioderma.com.ro> does not mean it has rights or interests in the Disputed Domain Name. The Complainant also owns and operates the domain name <bioderma.co.za> but did not take any action to recover that domain name. The Complainant has not suffered any loss because of the Disputed Domain Name and the UDRP precedents cited by the Complainant are not applicable in the present case. The Respondent and the Complainant operate in different industries and are therefore not competitors. The Respondent received no communications from the Complainant in relation to the Disputed Domain Name since its registration until now. As such, the Complainant has failed to prove that the Disputed Domain Name was registered and has been used in bad faith by the Respondent.

6. Discussion and Findings

6.1. Procedural Issues: Unsolicited Supplemental Filing

The Complainant submitted an unsolicited supplemental filing on November 10, 2020.

The Rules make no express provision for supplemental filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Generally, UDRP panels only accept supplemental filings in exceptional circumstances where such a filing clearly shows its relevance to the case and the filing party shows that it was unable to provide the information contained therein in the original complaint or response (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant’s supplemental filing provides a clarification regarding its earliest trade mark registration date in the country of the Respondent, Romania. The Panel notes that the information contained in the supplemental filing was already made available to the Panel in Annex 5 to the Complaint, and the registration date of the Complainant’s trade mark in Romania is available through the public trademark databases. Therefore, the content of the supplemental filing has been considered and taken into account by the Panel in reaching this decision.

6.2 Language of Proceeding

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 is based in Romania.

The Complainant has requested that English be the language of the proceedings for the following reasons:

(a) The choice of language is related to the combined fact that English is the language most widely used in international relations and is one of the working languages of the Center;

(b) The Disputed Domain Name is identical to the Complainant’s BIODERMA trade mark; and

(c) In order to proceed in Romanian, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of this administrative proceeding. The use of Romanian would impose a burden on the Complainant.

The Respondent did not comment on or oppose the Complainant’s request. However, the Respondent submitted its response in Romanian.

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 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 has accepted the Parties’ filings in their respective languages, and 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.

6.3 Substantive Issues

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.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the BIODERMA trade mark, based on its various trade mark registrations.

As noted in WIPO Overview 3.0, the threshold test for confusing similarity involves a reasoned but straightforward side-by-side comparison between the domain name and the textual components of the relevant trade mark. The Respondent’s claims regarding the first element, for example, the word “BIODERMA” is a common Latin term, are largely irrelevant to the assessment.

It is also 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) is generally disregarded. See section 1.11 of WIPO Overview 3.0.

In the present case, the Disputed Domain Name incorporates the Complainant’s BIODERMA trade mark in its entirety without any prefixes or suffixes.

The Panel finds that the Disputed Domain Name is identical to the Complainant’s BIODERMA trade mark and, accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

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 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 its BIODERMA trade mark, and there is no relationship between the Complainant and the Respondent entitling the Respondent to use the BIODERMA 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.

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; or

(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.

The Panel notes that the Respondent seeks to establish rights and legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) of the Policy. Section 2.3 of WIPO Overview 3.0 provides that a respondent does not have to acquire the corresponding trade mark or service mark rights to demonstrate it has been commonly known by the disputed domain name, but concrete evidence must be produced (Compagnie Gervais Danone v. Duxpoint and Alejandro Gomez, WIPO Case No. D2008-1799). The Respondent claims that it has been commonly known by the Disputed Domain Name and has produced an electronic copy of the Certificate of Incorporation issued in 2003 showing its full trade name BIODERMA S.R.L. The Disputed Domain Name was then registered by the Respondent in 2005, before the Respondent’s trade name changed to “BIODERM Medical Center” in 2008. The Respondent submits that even though it no longer operates under the trade name “BIODERMA”, it is still commonly known by the Disputed Domain Name. However, no evidence was provided by the Respondent to support this argument.

The Panel accepts the Respondent’s assertion that it had been operating in the healthcare industry under the name “BIODERMA” until 2008, but substantial proof is required to show that it has been commonly known by the Disputed Domain Name even after the change of its trade name.

As the Disputed Domain Name resolves to an inactive webpage, the Panel concurs with the Complainant that the Respondent’s use of the Disputed Domain Name is not in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Furthermore, the Respondent did not produce any evidence as to its demonstrable preparations to use the Disputed Domain Name since its registration.

In view of the above, the Panel finds that the Respondent has failed to show that its has rights or legitimate interests in the Disputed Domain Name, failing to rebut the Complainant’s prima facie case, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must demonstrate that the Disputed Domain Name was registered and has been used by the Respondent in bad faith under paragraph 4(a)(iii) of the Policy.

The Panel accepts that the international registration of the Complainant’s BIODERMA trade mark predates the date of registration of the Disputed Domain Name by many years and that the Complainant’s BIODERMA trade mark is currently fairly well-known.

While panels have consistenly found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding, panels will have to take into account the totality of the circumstances in each case and factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put. See section 3.3 of the WIPO Overview 3.0.

In the present case, the Panel considers that the evidence adduced by the Complainant was insufficient to demonstrate the Respondent’s possible or actual knowledge of the Complainant’s trade mark at the time of registration of the Disputed Domain Name. The Panel notes that, although the BIODERMA brand was established in the 1970s in France and its BIODERMA trade mark was first registered in Romania in 1997, its first subsidiary in Italy was opened in 2001, which marked the internationalisation of the BIODERMA brand. The Respondent was incorporated in 2003 and had been doing business under the trade name BIODERMA until 2008, during which time the Respondent registered the Disputed Domain Name that corresponded to its trade name. The Panel notes that the Disputed Domain Name was registered in 2005, and, despite the fact that the Complainant’s BIODERMA trade mark predates the date of registration of the Disputed Domain Name, stronger evidence is required to prove that the Respondent knew or should have known of the BIODERMA brand owned by the Complainant at the time of registration of the Disputed Domain Name or that the Respondent had targeted the Complainant or its trade mark to mislead or confuse Internet users.

In this case, the Respondent submitted a Response to the Complaint and did not use any privacy and proxy services to conceal its identity or use any false contact details in breach of its registration agreement.

Accordingly, the Panel finds on the balance of probabilities that the Respondent did not register the Disputed Domain Name in bad faith and the Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Gabriela Kennedy
Sole Panelist
Date: November 24, 2020


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