Decision for dispute CAC-UDRP-104635

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the following trademark registrations for the sign “BIODERMA” (the “BIODERMA trademark”):
- the International trademark BIODERMA with registration No.267207, registered on 19 March 1963 for goods in International Class 3;
- the International trademark BIODERMA with registration No.510524 registered on 9 March 1987 for goods in International Class 3; and
- the International trademark BIODERMA with registration No.678846, registered on 13 August 1997 for goods in International Class 3.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant was founded in France by the pharmacist-biologist Jean-Noël Thorel. It is a leading producer of skincare products marketed under the brands Bioderma, Institut Esthederm and Etat Pur. The Complainant has more than 3,100 employees in 48 subsidiaries located around the world. To sell its BIODERMA-branded products in over 130 countries, the Complainant operates under the name BIODERMA.

The Complainant owns the domain name <bioderma.com>, registered on 25 September 1997.

The disputed domain name was registered on 23 May 2022. It resolves to the website of a company under the name BIODERMA VIETNAM, which states that it is a “BIODERMA Official Store” and that it is “Bioderma Vietnam”, and offers BIODERMA-branded products.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant submits that the disputed domain name is confusingly similar to its BIODERMA trademark, as it reproduces this trademark with the addition of the letter “vn” - the common short form of “Vietnam”, which is not sufficient to avoid the likelihood of confusion.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because there is no relationship between the Parties and the Respondent is not commonly known by the disputed domain name. The Complainant adds that the Respondent is not making a bona fide offering of goods or services through the disputed domain name or carrying out a legitimate non-commercial or fair use of it. Rather, the Respondent uses the disputed domain name to impersonate Complainant by creating a likelihood with the Complainant’s entity operating in Vietnam and attempts to mislead consumers into thinking that the goods purportedly offered for sale on the website originate from the Complainant. Thus, according to the Complainant, the Respondent fails in at least one of the elements of the Oki Data test, as the website linked to the disputed domain name does not disclose accurately and prominently the registrant’s relationship with the trademark holder.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, given the distinctiveness of the Complainant's BIODERMA trademark and its reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with knowledge of this trademark. The Complainant notes that the Respondent’s website prominently displays the BIODERMA trademark and creates the false impression that it originates from the Complainant, so that Internet users are likely to consider the disputed domain name as endorsed by or connected with Complainant. On this basis, the Complainant contends that the Respondent acquired the disputed domain name with the only intention to attract for commercial gain Internet users to the associated website.


RESPONDENT:

The Respondent did not submit a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent has registered and is using the domain name in bad faith.

In this case, the Provider has employed the required measures to achieve actual notice of the Complaint to the Respondent, and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.

Identical or confusingly similar

The Complainant has provided evidence and has thus established its rights in the BIODERMA trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “bioderma-vn”, which reproduces the BIODERMA trademark entirely with the addition of the letters “vn”. As noted by the Complainant, this represents the commonly used abbreviation for “Vietnam”. The addition of this non-distinctive element has a low effect on the overall impression made by the disputed domain name, in which the BIODERMA trademark is easily distinguishable. As discussed in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

Taking all the above into account, the Panel finds that the disputed domain name is confusingly similar to the BIODERMA trademark in which the Complainant has rights.

Rights and legitimate interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because there is no affiliation between the Parties and Respondent is not commonly known under the disputed domain name. The Complainant also points out that the disputed domain name resolves to a website that attempts to impersonate the Complainant by creating a likelihood with the Complainant’s entity operating in Vietnam and thus misleads consumers into thinking that the goods offered for sale on the website originate from the Complainant. According to the Complainant, the Respondent therefore fails in at least one of the elements of the Oki Data test, as the website linked to the disputed domain name does not disclose accurately and prominently the registrant’s relationship with the trademark holder. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a Response and has not provided a plausible explanation of its registration and use of the disputed domain name.

In the Panel’s view, the circumstances of this case do not contradict the prima facie case made by the Complainant and do not support a finding that the Respondent has rights and legitimate interests in the disputed domain name. It is confusingly similar to the Complainant’s BIODERMA trademark and its composition creates the impression that the disputed domain name represents an official online location of the Complainant for Vietnam, and the evidence in the case shows that the associated website features the BIODERMA trademark of the Complainant and its Bioderma products, but contains no disclaimer for the lack of relationship with the Complainant. Rather, the Respondent’s website states that it is a “BIODERMA Official Store”, and that the provider of the website is “Bioderma Vietnam”. As mentioned by the Complainant, the Respondent thus does not accurately and prominently disclose the registrant’s relationship with the trademark holder and does not meet requirements of the Oki Data test. See section 2.8.1(iii) of the WIPO Overview 3.0.

All the above leads the Panel to the conclusion that it is more likely than not that the Respondent, being aware of the goodwill of the BIODERMA trademark, has registered and used the disputed domain name targeting this trademark in an attempt to exploit its goodwill by confusing Internet users that the disputed domain name is affiliated to the Complainant, and attracting them to its website. The Panel does note regard such conduct as legitimate and giving rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The registration of the Complainant’s BIODERMA trademark predates with many years the registration date of the disputed domain name, which reproduces this trademark entirely with the addition of the abbreviation for “Vietnam”. This may lead Internet users to believe that the disputed domain name and the website to which it resolves denote an official online location of the Complainant for Vietnam. The Respondent’s website features the BIODERMA trademark and offers products that appear as products of the Complainant, but contains no disclaimer for the lack of relationship with the Complainant. Instead, the website claims to be an “official store” of the Complainant and that the entity operating the website is Bioderma Vietnam. The Panel is therefore of the view that the Respondent is more likely to have registered and used the disputed domain name with knowledge of the Complainant’s BIODERMA trademark and with the intention of taking advantage of its goodwill by impersonating the Complainant and diverting the Complainant’s customers to its website for commercial gain.

This satisfies the Panel that the disputed domain name has been registered and used in bad faith.