WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ferring B.V. v. WhoisGuard, Inc. / Kent Davies, KD Global

Case No. D2020-1243

1. The Parties

The Complainant is Ferring B.V., Netherlands, represented by Jacobacci & Associati, France.

The Respondent is WhoisGuard, Inc., Panama / Kent Davies, KD Global, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ferrimg.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 May 25, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 29, 2020.

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 of the Complaint, and the proceedings commenced on June 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2020.

The Center appointed Jon Lang as the sole panelist in this matter on July 9, 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 is part of the FERRING group, a biopharmaceutical leader in reproductive medicine and women’s health, and in specialty areas within gastroenterology and urology. Founded in 1950, the FERRING group owns subsidiaries operating in almost 60 countries, and markets its products in 110 countries and had a global turnover in 2019 of more than Euro 1.9 billion.

The Complainant is the owner of a large portfolio of trademarks for FERRING and FERRING PHARMACEUTICALS in numerous countries in the world which are widely used in relation to pharmaceutical products and medical apparatus. By way of example, it owns International trademark registration for FERRING No 615597 registered on February 18, 1994; United States trademark registration for FERRING No 1431684 filed on January 2, 1985 and registered on March 10, 1987; and European Union trademark for FERRING PHARMACEUTICALS No 014570931 filed on September 21, 2015 and registered on January 11, 2016.

The Complainant also has a strong Internet presence through its large portfolio of domain names and websites, including its primary website at <ferring.com>.

The disputed domain name <ferrimg.com> (the Domain Name) was registered May 1, 2020.

5. Parties’ Contentions

A. Complainant

The following is a brief summary of the main contentions of the Complainant.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

Ignoring the suffix “.com”, the Domain Name consists of the Complainant’s mark FERRING, but with the letter “N” replaced by the letter “M”. Typing the letter “M” instead of “N” is a very common mistake given that the letters are next to each other on a “qwerty” keyboard. This substitution (“M” for “N”) has no real impact in terms of pronunciation and thus the misspelling is insufficient to change the overall impression created by the Domain Name. The misspelling constitutes typosquatting. The similarity between the Domain Name and FERRING mark will invariably result in a likelihood of confusion or an association of the Domain Name with the Complainant, and Internet users may be misled in to believing that the Domain Name is owned by the Complainant.

The Respondent has no rights or legitimate interests in respect of the Domain Name

The Complainant has not authorised the registration of the Domain Name. Until recently, the Domain Name resolved to a parking page which appeared to be linked to a “pay-per-click” revenue system. In this regard, the Complainant refers to Blanco GmbH + Co KG v. Above.com Domain Privacy / Transure Enterprise Ltd,WIPO Case No. D2012-2145) and quotes the following extract from that decision “Although there is nothing per se illegitimate in using a domain parking service, it is established that linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter and does not provide a legitimate interest in that domain name under the Policy”.

The Domain Name no longer resolves to that parking page and now just returns an error message. The Complainant’s legal counsel wrote to the Respondent on two occasions, without reply.

The Domain Name was registered and is being used in bad faith

The Complainant and its trademarks benefit from a strong reputation due to their global and Internet presence.

A Google search for “FERRING” returns only results relating to the Complainant in the first pages. In fact a Google search for “FERRIMG” also returns “FERRING” results.

Given its reputation, the Respondent must have been aware of the existence of the Complainant and its prior rights when registering the Domain Name.

By choosing to register and use a Domain Name confusingly similar to the Complainant’s name and widely known trademarks, the Respondent intended to ride on the reputation of the Complainant and its trademarks in an attempt to exploit, for commercial gain, Internet traffic destined for FERRING.

The Complainant makes various other points in relation to the Domain Name once resolving to a parking page, including that it matters not whether revenue is earned by the Registrant, or that Internet users, having viewed the parking page, might realize it is unconnected with the Complainant, and also that a disputed domain name resolving to a parking page is equivalent to a “passive holding”.

Any attempt to actively use the Domain Name would inevitably create a likelihood of confusion amongst Internet users, in that they would be led to believe that the Domain Name and any related website was owned or associated with the Complainant.

Further, it is asserted by the Complainant that any active use of the Domain Name by the Respondent would be illegitimate and would result in an infringement of the Complainant’s trademarks and reputation, in a “passing off” or in a scam.

The use of a privacy service by the underlying registrant when registering the Domain Name to hide its identity is an additional factor supporting bad faith. Furthermore, the Complaint tried to identify the underlying registrant from information provided by the Registrar without success and has serious doubts as to the accuracy and completeness of the information the Registrar holds.

The absence of any reply to communications sent to the Respondent supports the assertion of bad faith.

The Complainant is also concerned that the Domain name was registered and is being used for scam purposes and in order to impersonate FERRING. Indeed, email servers for <ferrimg.com> appear active and thus email addresses containing the suffix “@ferrimg.com” could be used to send and receive emails for improper purposes. Whilst the Domain Name resolved to a parking page, the Registrant subscribed to an extra charge option for enhanced email features, suggesting that emailing might be of interest.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant is the owner of the FERRING and FERRING PHARMACEUTICALS trademarks and thus clearly has rights in them.

Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the FERRING trademark except that the letter “m” has been substituted for the letter “n”.

Accordingly, the FERRING trademark and Domain Name are not identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.

The FERRING trademark is clearly recognizable within the Domain Name. The substitution of the letter “m” for the letter “n” does little to diminish the visual impression created by the Domain Name, i.e. that it is identical to, or very closely similar such that it could be mistaken for being identical to the Complainant’s FERRING trademark. To create such a visual impression was no doubt the very purpose in the Respondent choosing the Domain Name that it did. Given the substitution of letters (“n” to “m”), the Domain Name and mark cannot be said to be identical, but the Domain Name is certainly confusingly similar to the Complainant’s FERRING trademark.

The Panel finds that the Domain Name is confusingly similar to the FERRING trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. There is little point therefore in carrying out a separate analysis of any other of the Complainant’s marks.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a 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. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use without intent for commercial gain to mislead.

The Domain Name previously resolved to a parking page (albeit currently there is no active use at all).

Section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), provides: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”.

Whilst the links on the parking page do not appear to compete with or directly trade off the reputation and goodwill of the Complainant’s mark, Internet users may well be duped into visiting the parking page (as a result of typing but slightly misspelling the Complainant’s name) only because they believe it is the Complainant’s site, or connected in some way to the Complainant. Using the Domain Name to dupe Internet users into visiting a parking page (which they have no intention of visiting) when they are looking for the Complainant (or information related to it) cannot be said to be use (whether noncommercial or fair or otherwise) without intent to mislead.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. No such use is presently being made of the Domain Name, but given the near certainty of a false impression being created if it were to be so used, it is unlikely that any offering in the future would be treated as bona fide.

There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Domain Name, despite the misspelling, is confusingly similar to the FERRING trademark and may well be mistaken as being identical, which of course was very likely to have been the intention of the Respondent. The Panel is satisfied that the Respondent has engaged in typosquatting – the deliberate but usually minor misspelling of another’s trademark to mislead – which is exactly the sort of abusive conduct to which the Policy is directed and in and of itself evidence of bad faith.

The Respondent has no legitimate rights or interests in the Domain Name. In fact, it’s only or prime interest in the Domain Name was, at some point, to re-direct Internet users looking for the Complainant or information about the Complainant to a parking page using a Domain name almost identical to the Complainant’s FERRING trademark.

One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances described in paragraph 4(b) of the Policy, is to show that a 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 a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other location) or of products or services on it. These appear to be the circumstances present when the Domain Name resolved to the parking page. The fact that the Domain Name is no longer in active use does not preclude a finding of bad faith.

Indeed, Section 2.9 of the WIPO Overview 3.0, which concerns the “passive” (i.e. no active) use of a domain name, provides that “…..panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, 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”.

The Respondent here appears to tick all the boxes.

The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name <ferrimg.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: July 13, 2020